Sisyphus Touring, Inc. v. Tmz Productions, Inc. et al

NOTICE OF MOTION AND MOTION for Summary Judgment as to Plaintiff's Complaint

C.D. Cal.July 12, 2016

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 NOT. OF MOT. & MOT. FOR SUMMARY JUDGMENT 2:15-CV-09512-RSWL-PJW JOHN W. SPIEGEL (State Bar No. 78935) john.spiegel@mto.com KELLY M. KLAUS (State Bar No. 161091) kelly.klaus@mto.com KURUVILLA J. OLASA (State Bar No. 281509) kuruvilla.olasa@mto.com MUNGER, TOLLES & OLSON LLP 355 South Grand Avenue Thirty-Fifth Floor Los Angeles, California 90071-1560 Telephone: (213) 683-9100 Facsimile: (213) 687-3702 Attorneys for Defendants UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA, WESTERN DIVISION SISYPHUS TOURING, INC., Plaintiff, vs. TMZ PRODUCTIONS, INC., et al., Defendants. Case No. 2:15-CV-09512-RSWL-PJW NOTICE OF MOTION AND MOTION FOR SUMMARY JUDGMENT Judge: Hon. Ronald S.W. Lew Date: August 16, 2016 Time: 10:00 a.m. Crtrm: 21 TMZ PRODUCTIONS, INC., et al. Third Party Plaintiffs, vs. NAEEM MUNAF, Third Party Defendant. Case 2:15-cv-09512-RSWL-PJW Document 47 Filed 07/12/16 Page 1 of 22 Page ID #:235 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 NOT. OF MOT. & MOT. FOR SUMMARY JUDGMENT 2:15-CV-09512-RSWL-PJW TO ALL PARTIES AND THEIR COUNSEL OF RECORD: PLEASE TAKE NOTICE that on August 16, 2016, at 10:00 a.m., or as soon thereafter as counsel may be heard in Courtroom 21 of the above-captioned Court, located at 312 North Spring Street, Los Angeles, California, 90012, Defendants TMZ Productions, Inc. (TMZ Productions, Inc. has changed its name, and is now named MBLC Productions Inc.), TMZ.com, EHM Productions, Inc., and Warner Bros. Entertainment Inc. (collectively, “TMZ”), will and hereby do move for summary judgment pursuant to Rule 56 of the Federal Rules of Civil Procedure. This motion is based on this Notice of Motion and Motion; the attached Memorandum of Points and Authorities; the Parties’ Stipulation of Facts for Summary Judgment Motions, Dkt. No. 40 (per the July 6, 2016 Order, Dkt. No. 39, ¶ 2, no Statement of Uncontroverted Facts and Conclusions of Law is required for facts contained in the Stipulation of Facts); the Declaration of Kuruvilla J. Olasa and Exhibits thereto; the [Proposed] Judgment concurrently lodged; the pleadings and papers on file in this action; any reply memorandum that may be filed; and any further evidence or argument that may be presented to the Court at or prior to the submission of this motion. This motion is made following the conference of counsel pursuant to L.R. 7-3 that concluded on June 21, 2016. DATED: July 12, 2016 MUNGER, TOLLES & OLSON LLP By: /s/ Kelly M. Klaus KELLY M. KLAUS Attorneys for Defendants Case 2:15-cv-09512-RSWL-PJW Document 47 Filed 07/12/16 Page 2 of 22 Page ID #:236 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 TABLE OF CONTENTS Page -i- MEMO. OF POINTS & AUTHORITIES CASE NO. 2:15-CV-09512-RSWL-PJW I. INTRODUCTION ............................................................................................. 1 II. FACTUAL BACKGROUND ........................................................................... 3 III. ARGUMENT .................................................................................................... 6 A. Summary Judgment Standard ................................................................. 6 B. Sisyphus Does Not Own The Munaf Video (Or The Taylor Swift Excerpt) As A Work Made For Hire ....................................................... 6 C. Sisyphus Cannot Claim Ownership Of The Munaf Video (Or The Taylor Swift Excerpt) By A Post-Hoc Assignment Of Copyright: Sisyphus Has No Document Memorializing A Transfer; And By December 6, Mr. Munaf Had Already Either Transferred Ownership To TMZ Or, At A Minimum, Granted TMZ An Implied License ....................................................................... 9 1. Mr. Munaf Assigned Ownership Of The Taylor Swift Excerpt To TMZ On December 4, 2015..................................... 10 2. At A Minimum, TMZ Has An Irrevocable Implied License To Use The Taylor Swift Excerpt ............................................... 13 IV. CONCLUSION ............................................................................................... 16 Case 2:15-cv-09512-RSWL-PJW Document 47 Filed 07/12/16 Page 3 of 22 Page ID #:237 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 TABLE OF AUTHORITIES Page(s) -ii- MEMO. OF POINTS & AUTHORITIES CASE NO. 2:15-CV-09512-RSWL-PJW FEDERAL CASES Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986) ............................................................................................... 6 Andreas Carlsson Prods., AB v. Barnes, No. 10-cv-8396-CAS, 2012 WL 2366391 (C.D. Cal. June 18, 2012) ................................................ 2, 8, 9 Asset Marketing Sys. v. Gagnon, 542 F.3d 748 (9th Cir. 2008) ................................................................................ 15 Celotex Corp. v. Catrett, 477 U.S. 317 (1986) ............................................................................................... 6 Community for Creative Non-Violence v. Reid, 490 U.S. 730 (1989) ........................................................................................... 7, 8 Crispin v. Christian Audigier, Inc., 839 F. Supp. 2d 1086 (C.D. Cal. 2011) ................................................................ 15 Dish Network L.L.C. v. TV Net Solutions, LLC, No. 6:12-cv-1629-Orl- 41TBS, 2014 WL 6685366 (M.D. Fla. Oct. 10, 2014) ..................................................................................... 13 Effects Associates, Inc. v. Cohen, 908 F.2d 555 (9th Cir. 1990) .................................................................... 10, 13, 14 Fosson v. Palace (Waterland), Ltd., 78 F.3d 1448 (9th Cir. 1996) ................................................................................ 15 Garcia v. Google, Inc., 786 F.3d 733 (9th Cir. 2015) .................................................................................. 7 Gladwell Gov’t Servs., Inc. v. Cty. of Marin, 265 F. App’x 624 (9th Cir. 2008) ................................................................... 2, 8, 9 I.A.E., Inc. v. Shaver, 74 F.3d 768 (7th Cir. 1996) ............................................................................ 13, 14 John G. Danielson, Inc. v. Winchester-Conant Properties, Inc., 322 F.3d 26 (1st Cir. 2003) .................................................................................. 13 Case 2:15-cv-09512-RSWL-PJW Document 47 Filed 07/12/16 Page 4 of 22 Page ID #:238 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 TABLE OF AUTHORITIES (continued) Page(s) -iii- MEMO. OF POINTS & AUTHORITIES CASE NO. 2:15-CV-09512-RSWL-PJW Lulirama Ltd., Inc. v. Axcess Broadcast Servs., Inc., 128 F.3d 872 (5th Cir. 1997) ................................................................................ 15 Metropolitan Regional Info. Sys., Inc. v. American Home Realty Network, Inc., 722 F.3d 591 (4th Cir. 2013) ................................................................................ 12 Nuh Nhuoc Loi v. Scribner, 671 F. Supp. 2d 1189 (S.D. Cal. 2009) .................................................................. 8 Oddo v. Ries, 743 F.2d 630 (9th Cir. 1984) ................................................................................ 14 Playboy Enterprises, Inc. v. Dumas, 53 F.3d 549 (2d Cir. 1995) ..................................................................................... 9 Rano v. Sipa Press, Inc., 987 F.2d 580 (9th Cir. 1993) ................................................................................ 11 Schiller & Schmidt, Inc. v. Nordisco Corp., 969 F.2d 410 (7th Cir. 1992) .......................................................................... 2, 8, 9 Silvers v. Sony Pictures Entm’t, Inc., 402 F.3d 881 (9th Cir. 2005) .............................................................................. 1, 7 Sprengel v. Mohr, No. CV 11-08742-MWF, 2013 WL 645532 (C.D. Cal. Feb. 21, 2013) ..................................................................................... 15 Summers v. Teichert & Son, Inc., 127 F.3d 1150 (9th Cir. 1997) ................................................................................ 6 Uche-Uwakwe v. Shinseki, 972 F. Supp. 2d 1159 (C.D. Cal. 2013) .................................................................. 8 United States v. Dorsey, No. CR 14-328-CAS, 2015 WL 847395, at *3 n.4 (C.D. Cal. Feb. 23, 2015) (Snyder, J.) ............................................................................................. 8 Vergara Hermosilla v. Coca-Cola Co., No. 10-21418-CIV, 2011 WL 744098 (S.D. Fla. Feb. 23, 2011) .................. 12, 13 Case 2:15-cv-09512-RSWL-PJW Document 47 Filed 07/12/16 Page 5 of 22 Page ID #:239 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 TABLE OF AUTHORITIES (continued) Page(s) -iv- MEMO. OF POINTS & AUTHORITIES CASE NO. 2:15-CV-09512-RSWL-PJW FEDERAL STATUTES 15 U.S.C. § 7001(a)(2) .............................................................................................. 12 15 U.S.C. § 7006(5) ................................................................................................... 12 17 U.S.C. § 101 ........................................................................................................ 1, 7 17 U.S.C. § 101(1) ....................................................................................................... 7 17 U.S.C. § 101(2) ....................................................................................................... 2 17 U.S.C. § 102(a) ....................................................................................................... 7 17 U.S.C. § 201(a) ....................................................................................................... 7 17 U.S.C. § 203 .......................................................................................................... 11 17 U.S.C. § 204(a) ................................................................................... 10, 12, 13, 15 17 U.S.C. § 501(b) ....................................................................................................... 1 STATE STATUTES Cal. Civ. Code § 1605 ................................................................................................ 15 FEDERAL RULES Fed. R. Civ. P. 56(a) .................................................................................................... 6 Case 2:15-cv-09512-RSWL-PJW Document 47 Filed 07/12/16 Page 6 of 22 Page ID #:240 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -1- MEMO. OF POINTS & AUTHORITIES CASE NO. 2:15-CV-09512-RSWL-PJW MEMORANDUM OF POINTS AND AUTHORITIES I. INTRODUCTION Plaintiff Sisyphus Touring, Inc. (“Sisyphus”) raises a single claim of copyright infringement concerning the posting of a video on the website TMZ.com. Sisyphus does not own the copyright to that video and therefore cannot pursue its infringement claim. See Silvers v. Sony Pictures Entm’t, Inc., 402 F.3d 881, 885 (9th Cir. 2005) (en banc) (“[I]n order for a plaintiff to be ‘entitled … to institute an action’ for infringement, the infringement must be ‘committed while he or she is the owner of’ the particular exclusive right allegedly infringed.”) (quoting 17 U.S.C. § 501(b)). Defendants (referred to collectively herein as “TMZ”) therefore move for summary judgment. The video in question shows the popular actor and recording artist Jared Leto (who owns Sisyphus) discussing the music of Taylor Swift, another popular recording artist. Neither Mr. Leto nor anyone else affiliated with Sisyphus shot the video. An independent videographer named Naeem Munaf shot it. Sisyphus bases its claim of ownership solely on the assertion that Mr. Munaf created the video as a “work made for hire” under the Copyright Act. TMZ contends he did not. TMZ’s contention that the video was not a work made for hire presents a pure question of law. The underlying facts necessary to rule for TMZ are not only undisputed but the parties have stipulated to them.1 There are only two ways that Mr. Munaf could have created the video as a work made for hire, and neither of them applies. See 17 U.S.C. § 101 (definition of “work made for hire”). First, “a work prepared by an employee in the scope of his or her employment” is a work made for hire, id., but it is stipulated that Mr. Munaf has never been a Sisyphus employee. S.F. ¶ 4. 1 The parties’ Stipulated Facts (“S.F.”), Dkt. No. 40, are filed concurrently and apply to this motion and Sisyphus’s simultaneous motion for partial summary judgment on TMZ’s fair use and First Amendment defenses. Case 2:15-cv-09512-RSWL-PJW Document 47 Filed 07/12/16 Page 7 of 22 Page ID #:241 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -2- MEMO. OF POINTS & AUTHORITIES CASE NO. 2:15-CV-09512-RSWL-PJW Second, Sisyphus could have “specially ordered or commissioned” Mr. Munaf to create the video as a work made for hire. 17 U.S.C. § 101(2) (definition of “work made for hire”). However, for this provision to apply, [1] the parties (Sisyphus and Mr. Munaf) must “expressly agree in a written instrument signed by them that the work shall be considered a work made for hire,” id., and [2] “‘[t]he writing must precede the creation of the property’ to qualify as a work-for-hire agreement.” Gladwell Gov’t Servs., Inc. v. Cty. of Marin, 265 F. App’x 624, 626 (9th Cir. 2008) (emphasis added) (quoting Schiller & Schmidt, Inc. v. Nordisco Corp., 969 F.2d 410, 413 (7th Cir. 1992) (Posner, J.)); accord Andreas Carlsson Prods., AB v. Barnes, No. 10-cv-8396-CAS, 2012 WL 2366391, at *5 (C.D. Cal. June 18, 2012). Here, it is stipulated that Mr. Munaf shot the video nearly three months before he executed either of two agreements with Sisyphus containing work- made-for-hire-language (“the Post-Hoc Agreements”). S.F. ¶¶ 7, 22, 28. Under the reasoning of the cited cases, that stipulated fact ends Sisyphus’s case. The video cannot be a work made for hire, which is the only basis upon which Sisyphus claims copyright ownership. Sisyphus does not claim that the Post-Hoc Agreements (or any other document) transferred ownership of the copyright by assignment. Any attempt by Sisyphus to make such a claim in opposition to this motion would fail. There is no language in the Post-Hoc Agreements (or any produced document) purporting to memorialize an assignment of ownership. Moreover, at least two days before he executed the Post-Hoc Agreements with Sisyphus, Mr. Munaf had already transferred ownership of the portion of the video in question to TMZ. At a minimum, Mr. Munaf granted TMZ an implied, irrevocable license to use that video online. In either case, any newly minted claim by Sisyphus to own the video by assignment would fail in the face of TMZ’s pre-existing rights. Case 2:15-cv-09512-RSWL-PJW Document 47 Filed 07/12/16 Page 8 of 22 Page ID #:242 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -3- MEMO. OF POINTS & AUTHORITIES CASE NO. 2:15-CV-09512-RSWL-PJW II. FACTUAL BACKGROUND The facts relevant to this motion are simple and straightforward, and the parties have stipulated to them. On September 8, 2015, one of Mr. Leto’s agents, Jared Rosenberg, asked Mr. Munaf, a videographer with no prior affiliation with Sisyphus, to go to Mr. Leto’s recording studio to shoot some video footage of Mr. Leto (the “Munaf Video”). S.F. ¶¶ 3, 4; Olasa Decl. Ex. 7 at 28. Mr. Munaf shot the Munaf Video by himself, using his own equipment. S.F. ¶¶ 5, 6. When he shot the Munaf Video, Mr. Munaf was not a Sisyphus employee- indeed, he has never been a Sisyphus employee. S.F. ¶ 4. Sisyphus did not present Mr. Munaf with any proposed written agreement (nor did Mr. Munaf sign any agreement with Sisyphus) before he shot the video on September 8, 2015, or at any time thereafter until December 6, 2015 at the earliest. S.F. ¶¶ 7, 22, 28. TMZ.com is a website that reports on news stories involving celebrities. S.F. ¶ 9. On December 4, 2015, Mr. Munaf, using the pseudonym “Jake Miller,” contacted TMZ’s anonymous tip line, stating that he had a video of Mr. Leto talking about Taylor Swift. S.F. ¶ 10. TMZ representative Anthony Dominic contacted Mr. Munaf that same day. S.F. ¶ 11. Then, later the same day, Nikki Hendry, another TMZ representative, sent Mr. Munaf an email, stating: Per our conversation both parties have agreed that TMZ will pay you $2,000.00 USD for the outright purchase of 1 video of Jared Leto talking about Taylor Swift. When you have a moment can you please send me an email back stating you agree to the terms of the agreement. I have also attached the contract and W-9 forms. Please print and fill them out and either fax, or scan and email back to me OR take a good clear cell phone photo of the docs and email them back to me. Case 2:15-cv-09512-RSWL-PJW Document 47 Filed 07/12/16 Page 9 of 22 Page ID #:243 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -4- MEMO. OF POINTS & AUTHORITIES CASE NO. 2:15-CV-09512-RSWL-PJW S.F. ¶ 12; Olasa Decl. Ex. 1 at 4 (email from Ms. Hendry to Mr. Munaf). Ms. Hendry’s email attached an IRS W-9 tax form and a short contract. S.F. ¶¶ 12, 13; Olasa Decl. Ex. 1 at 4-9. Within minutes, Mr. Munaf responded to Ms. Hendry with the following email: I agree. Sending video to Anthony. I will send these forms back soon. S.F. ¶ 14; Olasa Decl. Ex. 2 at 11. Mr. Munaf immediately provided TMZ with an excerpt from the Munaf Video in which Mr. Leto discusses Taylor Swift’s music. S.F. ¶ 16. TMZ displayed a short excerpt of the Munaf Video (approximately one minute and 10 seconds in length) in which Mr. Leto discusses Taylor Swift’s music (the “Taylor Swift Excerpt”), together with an accompanying article written by TMZ staff, on TMZ.com, starting on December 7, 2015, at 1:00 a.m. S.F. ¶ 23. Prior to uploading the Taylor Swift Excerpt, TMZ representatives contacted Mr. Leto’s representatives on December 6 to seek comment on the story. S.F. ¶ 18. After learning that TMZ was about to publish the Taylor Swift Excerpt, Mr. Rosenberg contacted Mr. Munaf and asked him to sign a non-disclosure agreement. S.F. ¶ 20. In a text message on the night of December 6-nearly three months after Mr. Munaf shot the Munaf Video-Mr. Rosenberg told Mr. Munaf that he would “shoot [him] an email saying we are paying you 30 an hour for the work you did on Sept. 8th. I know so long ago but do you remember how many hours?” Olasa Decl. Ex. 7 at 31. Sisyphus has not produced any documentary evidence prior to December 6 evidencing any discussion between Sisyphus and Mr. Munaf regarding payment for the purported work made for hire. Indeed, the text exchange between Mr. Rosenberg and Mr. Munaf is the first piece of written communication with Mr. Munaf following the September 8 video shoot that Sisyphus has produced in discovery. Case 2:15-cv-09512-RSWL-PJW Document 47 Filed 07/12/16 Page 10 of 22 Page ID #:244 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -5- MEMO. OF POINTS & AUTHORITIES CASE NO. 2:15-CV-09512-RSWL-PJW Mr. Rosenberg also had Mr. Munaf sign two nearly identical non-disclosure agreements containing work-made-for-hire language (the “Post-Hoc Agreements” referenced in the Introduction). Mr. Munaf signed the “First Post-Hoc Agreement” sometime in the middle of the night between December 6 and December 7. S.F. ¶¶ 20, 22. The First Post-Hoc Agreement contains a statement that “The results and proceeds of your services and any contributions by you to us and in or in connection with the Proprietary Materials shall be owned exclusively by us as a work-made-for- hire.” Olasa Decl. Ex. 3 at 13. The First Post-Hoc Agreement states that it is “Acknowledged and agreed” as of December 6, 2015. S.F. ¶ 22; Olasa Decl. Ex. 3 at 15. On December 7, 2015, Mr. Munaf signed the Second Post-Hoc Agreement. S.F. ¶ 28. This one is nearly identical to the First Post-Hoc Agreement, differing only in the fact that the parties have changed the date to be “as of” September 8, 2015. Olasa Decl. Ex. 4 at 19. In other words, the parties attempted to backdate the Second Post-Hoc Agreement to the date on which Mr. Munaf shot the Munaf Video. It is stipulated, however, that Mr. Munaf did not sign any document (containing work-made-for-hire language or otherwise) with Sisyphus on September 8 or at any time before he shot the Munaf Video. S.F. ¶ 7. Neither of the Post-Hoc Agreements (nor any other document Sisyphus has produced) contains any language purporting to assign ownership of the Munaf Video from Mr. Munaf to Sisyphus. Sisyphus registered 12 minutes and 8 seconds of the Munaf Video (including the Taylor Swift Excerpt) with the United States Copyright Office as a work made for hire. S.F. ¶ 30; Olasa Decl. Ex. 5 at 22. On December 9, 2015, Sisyphus filed the instant action, alleging a single claim for copyright infringement.2 2 TMZ answered and filed a third-party complaint against Mr. Munaf, alleging that if TMZ is liable to Sisyphus, then Mr. Munaf is liable to TMZ. See Dkt. Nos. 21, 29. Mr. Munaf failed to respond to the third-party complaint, the Clerk has entered Case 2:15-cv-09512-RSWL-PJW Document 47 Filed 07/12/16 Page 11 of 22 Page ID #:245 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -6- MEMO. OF POINTS & AUTHORITIES CASE NO. 2:15-CV-09512-RSWL-PJW The central facts regarding this case are largely undisputed. To conserve party and judicial resources, Sisyphus and TMZ agreed to present early motions for summary judgment or partial summary judgment based on stipulated facts. Dkt. 38. III. ARGUMENT A. Summary Judgment Standard Summary judgment is proper where “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). Once the moving party demonstrates the absence of a genuine issue of fact for trial, the party opposing summary judgment may not rest upon mere denials but must set out specific facts showing a genuine issue for trial. See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250, 256 (1986). Where the non-moving party bears the burden of proof on an element of its case, it must make a showing sufficient to establish a genuine issue of material fact with respect to the existence of that element or be subject to summary judgment. See Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). “[A] mere ‘scintilla’ of evidence will not be sufficient to defeat a properly supported motion for summary judgment; rather, the nonmoving party must introduce some ‘significant probative evidence tending to support the complaint.’ ” Summers v. Teichert & Son, Inc., 127 F.3d 1150, 1152 (9th Cir. 1997). B. Sisyphus Does Not Own The Munaf Video (Or The Taylor Swift Excerpt) As A Work Made For Hire Sisyphus claims to own the Munaf Video (and with it the Taylor Swift Excerpt) as a work made for hire. As noted, this is how Sisyphus described its claim of ownership in its application to register the Munaf Video with the Copyright Office. Olasa Decl. Ex. 5 at 22. If the Munaf Video is not a work made for hire, then Sisyphus does not own the copyright to any footage that TMZ posted online, default, Dkt. No. 37, and TMZ separately will move for default judgment against Mr. Munaf if the case continues. Case 2:15-cv-09512-RSWL-PJW Document 47 Filed 07/12/16 Page 12 of 22 Page ID #:246 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -7- MEMO. OF POINTS & AUTHORITIES CASE NO. 2:15-CV-09512-RSWL-PJW and Sisyphus cannot prosecute this action. Silvers, 402 F.3d at 885. Based on the law and stipulated facts, the Munaf Video (including the Taylor Swift Excerpt) is not a work made for hire. Copyright “initially vests in the author or authors of the work.” 17 U.S.C. § 201(a). As the Supreme Court has explained, “the author” is as a general rule “the party who actually creates the work, that is, the person who translates an idea into a fixed, tangible expression entitled to copyright protection.” Community for Creative Non-Violence v. Reid, 490 U.S. 730, 737 (1989). In this case, Mr. Munaf authored the Munaf Video: he shot the video alone, using his own equipment, and thereby “fixed” the scene he recorded into a “tangible medium of expression.” 17 U.S.C. § 102(a); see Garcia v. Google, Inc., 786 F.3d 733, 744 (9th Cir. 2015) (en banc) (video crew that recorded movie, not the actor, “fixed [the actor’s] performance in the tangible medium, whether in physical film or digital form”). Sisyphus claims that it owns copyright in the video under the “work made for hire” doctrine. There are only two ways that a copyrighted work may be a work made for hire, and Sisyphus satisfies neither of them. First, “a work prepared by an employee within the scope of his or her employment” is a work made for hire. 17 U.S.C. § 101(1) (definition of “work made for hire”). This provision is inapplicable because Mr. Munaf is not and never has been a Sisyphus employee. S.F. ¶ 4. Second, “a work specially ordered or commissioned for use… as part of a motion picture or audiovisual work” may qualify as a work made for hire. 17 U.S.C. § 101 (definition of “work made for hire”). For this provision to apply, however, the parties must “expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.” Id. This “specially commissioned” option is the sole ground on which Sisyphus asserts copyright ownership. Sisyphus asserts that the Post-Hoc Agreements that Mr. Munaf signed Case 2:15-cv-09512-RSWL-PJW Document 47 Filed 07/12/16 Page 13 of 22 Page ID #:247 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -8- MEMO. OF POINTS & AUTHORITIES CASE NO. 2:15-CV-09512-RSWL-PJW on or after December 6, 2015, satisfy the signed written instrument requirement for the video Mr. Munaf shot nearly three months earlier, on September 8, 2015. Sisyphus’s argument fails because the “[t]he plain language of the statute indicates that a work-for-hire agreement cannot apply to works that are already in existence.” Gladwell, 265 F. App’x at 626.3 The “written instrument” must “precede the creation of the property to qualify as a work-for-hire agreement.” Id. (quoting Schiller & Schmidt, 969 F.2d at 413)); see also Andreas Carlsson Prods., 2012 WL 2366391, at *5. Judge Posner explained the purpose of this rule in Schiller & Schmidt. The rule not only operates like a state law statute of frauds, to protect the parties to the agreement. Schiller & Schmidt, 969 F.2d at 412-13. The rule also serves “to make the ownership of property rights in intellectual property clear and definite, so that such property will be readily marketable.” Id.; see Reid, 490 U.S. at 749 (noting that “Congress’s paramount goal in revising the 1976 [Copyright] Act [was] enhancing predictability and certainty of copyright ownership”). Gladwell, 265 F. App’x at 626, follows Schiller & Schmidt, and in Andreas Carlsson, Judge Snyder followed both cases. The plaintiff in Andreas Carlsson alleged that he was the owner of a treatment for a graphic novel as a work made for hire. 2012 WL 2366391, at *1, *5. However, because the treatment had been 3 Although Gladwell is not published and therefore not precedential within the Ninth Circuit, the decision nevertheless may be cited for its persuasive value. Uche- Uwakwe v. Shinseki, 972 F. Supp. 2d 1159, 1189 & n.14 (C.D. Cal. 2013) (citing unpublished post-2006 Ninth Circuit cases “as persuasive authority”); United States v. Dorsey, No. CR 14-328-CAS, 2015 WL 847395, at *3 n.4 (C.D. Cal. Feb. 23, 2015) (Snyder, J.) (“[U]npublished decisions issued on or after January 1, 2007 may be cited ‘as persuasive authority pursuant to Ninth Circuit Rule 36- 3(b).’”) (quoting Uche-Uwakwe, 972 F. Supp. 2d at 1189 & n.14); Nuh Nhuoc Loi v. Scribner, 671 F. Supp. 2d 1189, 1201 n.10 (S.D. Cal. 2009) (“Although still not binding precedent, unpublished decisions have persuasive value and indicate how the Ninth Circuit applies binding authority.”). Case 2:15-cv-09512-RSWL-PJW Document 47 Filed 07/12/16 Page 14 of 22 Page ID #:248 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -9- MEMO. OF POINTS & AUTHORITIES CASE NO. 2:15-CV-09512-RSWL-PJW written “more than two months prior to the parties’ written [a]greement,” the court held that the work did not qualify as a work made for hire.” Id. at *5 (citing Gladwell, 265 F. App’x 624 at 626, and Schiller & Schmidt, 969 F.2d at 412-13). The reasoning of these decisions ends Sisyphus’s case. Mr. Munaf did not execute a work-made-for-hire agreement before shooting the Munaf Video. He did not do so until nearly three months after he created the Munaf Video. Neither the Munaf Video nor any part of it (including the Taylor Swift Excerpt, which TMZ posted) is a work made for hire. The Second Circuit, in Playboy Enterprises, Inc. v. Dumas, 53 F.3d 549 (2d Cir. 1995), held that, in some instances, a signed writing executed after the work was created may satisfy the requirements of the work-made-for-hire doctrine. Id. at 559. Neither the Ninth Circuit nor (so far as we have been able to find) any Court of this District has adopted the Second Circuit’s holding. Gladwell and Andreas Carlsson, in contrast, held that a post-hoc agreement will not suffice.4 As a matter of law, Sisyphus never acquired ownership of the Munaf Video as a work made for hire, which is the only ground of ownership Sisyphus has ever asserted. TMZ is entitled to summary judgment. C. Sisyphus Cannot Claim Ownership Of The Munaf Video (Or The Taylor Swift Excerpt) By A Post-Hoc Assignment Of Copyright: Sisyphus Has No Document Memorializing A Transfer; And By December 6, Mr. Munaf Had Already Either Transferred Ownership To TMZ Or, At A Minimum, Granted TMZ An Implied License Sisyphus has not claimed ownership of the Munaf Video (or the Taylor Swift Excerpt from that video) on the ground that either of the Post-Hoc Agreements, or 4 Playboy in any event is distinguishable. That case involved a dispute between the estate of the author of the work and the company that said it commissioned the work. 53 F.3d at 551-52. Unlike in this case, the interests of a third party were not at issue. The Second Circuit recognized that where a third-party’s interests are at stake, “Congress’s goal of ‘predictability’” could be frustrated by post-hoc work- made-for-hire agreements. Id. at 559. Case 2:15-cv-09512-RSWL-PJW Document 47 Filed 07/12/16 Page 15 of 22 Page ID #:249 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -10- MEMO. OF POINTS & AUTHORITIES CASE NO. 2:15-CV-09512-RSWL-PJW any other document, assigned ownership from Mr. Munaf to Sisyphus. Nor can Sisyphus claim such a right by assignment that would allow it to sue TMZ for infringement. Section 204(a) of the Copyright Act provides that “[a] transfer of copyright ownership, other than by operation of law, is not valid unless an instrument of conveyance, or a note or a memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner’s duly authorized agent.” 17 U.S.C. § 204(a). Nothing in the Post-Hoc Agreements purports to memorialize any transfer of ownership by assignment. Olasa Decl. Ex. 3 at 13, Ex. 4 at 17. And, by the time that Mr. Munaf and Sisyphus started to correspond about the Munaf Video (on and after December 6, 2015), Mr. Munaf already had assigned-on December 4, 2015-ownership of the Taylor Swift Excerpt to TMZ. The assignment to TMZ trumps any later attempt by Mr. Munaf to assign ownership to Sisyphus (Section 1, infra). At a minimum, Mr. Munaf’s agreement with TMZ and his sending the Taylor Swift Excerpt to TMZ for its use creates an irrevocable implied license from Mr. Munaf to TMZ (Section 2, infra). 1. Mr. Munaf Assigned Ownership Of The Taylor Swift Excerpt To TMZ On December 4, 2015 Mr. Munaf’s email correspondence with TMZ on December 4, 2015, transferred ownership of the Taylor Swift Excerpt to TMZ consistent with Section 204(a) of the Copyright Act. The Ninth Circuit has explained: Section 204’s writing requirement is not unduly burdensome; it necessitates neither protracted negotiations nor substantial expense. The rule is really quite simple: If the copyright holder agrees to transfer ownership to another party, that party must get the copyright holder to sign a piece of paper saying so. It doesn’t have to be the Magna Charta; a one-line pro forma statement will do. Effects Associates, Inc. v. Cohen, 908 F.2d 555, 557 (9th Cir. 1990). Case 2:15-cv-09512-RSWL-PJW Document 47 Filed 07/12/16 Page 16 of 22 Page ID #:250 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -11- MEMO. OF POINTS & AUTHORITIES CASE NO. 2:15-CV-09512-RSWL-PJW The December 4 email exchange between Mr. Munaf and TMZ satisfies this simple rule. At 1:17 p.m. that day, Ms. Hendry of TMZ sent Mr. Munaf an email stating: “Per our conversation both parties have agreed that TMZ will pay you $2,000.00 USD for the outright purchase of 1 video of Jared Leto talking about Taylor Swift.” S.F. ¶ 12; Olasa Decl. Ex. 1 at 4. Ms. Hendry asked Mr. Munaf to “please send me an email back stating you agree to the terms of the agreement.” S.F. ¶ 12; Olasa Decl. Ex. 1 at 4. Several minutes after receiving Hendry’s email, Munaf sent a reply email stating: “I agree. Sending video to Anthony.” S.F. ¶ 14; Olasa Decl. Ex. 2 at 11 (emphasis added). That same afternoon, Mr. Munaf sent TMZ the Taylor Swift Excerpt. S.F. ¶ 16. Indeed, on December 7, Mr. Munaf confirmed to Sisyphus that he previously “agree[d] to give TMZ the footage for a financial gain of $2,000.” S.F. ¶ 27; Olasa Decl. Ex. 6 at 25. The December 4 email exchange satisfied all the requirements for Munaf to assign the copyright to TMZ. The email was a writing. The email exchange memorialized the agreement’s material terms: Munaf agreed to transfer ownership of the Taylor Swift Excerpt to TMZ, and TMZ agreed to pay Munaf $2,000. Mr. Munaf them immediately performed his promise under the agreement: he transferred the Taylor Swift Excerpt to TMZ. While Mr. Munaf later wrote TMZ attempting to terminate the agreement, Mr. Munaf had no right under the agreement or law to terminate. The Ninth Circuit has held that the Copyright Act’s express provisions regarding an author’s right to terminate the transfer-see 17 U.S.C. § 203 (specifying requirements for exercising right to terminate transfer only starting 35 years after the initial grant)-preempt any attempt by Mr. Munaf to terminate the agreement under California law. See Rano v. Sipa Press, Inc., 987 F.2d 580, 585 (9th Cir. 1993) (application of California law provision allowing party to agreement Case 2:15-cv-09512-RSWL-PJW Document 47 Filed 07/12/16 Page 17 of 22 Page ID #:251 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -12- MEMO. OF POINTS & AUTHORITIES CASE NO. 2:15-CV-09512-RSWL-PJW of non-specified duration to terminate agreement at will “directly conflict[s] with federal copyright law” and is preempted).5 Mr. Munaf’s email stating, “I agree,” satisfies § 204(a)’s signature requirement. The Electronic Signatures in Global and National Commerce Act (the “E-Sign Act”) mandates that, with respect to any transaction in interstate commerce, “a contract relating to such transaction may not be denied legal effect, validity, or enforceability solely because an electronic signature or electronic record was used in its formation.” 15 U.S.C. § 7001(a)(2). Under the E-Sign Act, an “electronic signature” is “an electronic sound, symbol, or process, attached to or logically associated with a contract or other record and executed or adopted by a person with an intent to sign the record.” Id. § 7006(5). Case law makes clear that, in accordance with the E-Sign Act, § 204(a)’s signature requirement may be satisfied by an electronic signature, Metropolitan Regional Info. Sys., Inc. v. American Home Realty Network, Inc., 722 F.3d 591, 601-02 (4th Cir. 2013), and that an email may constitute an electronic signature. Vergara Hermosilla v. Coca-Cola Co., No. 10-21418-CIV, 2011 WL 744098 (S.D. Fla. Feb. 23, 2011), is instructive and closely on point. The plaintiff there had created an adaptation of a song for Coca-Cola. In an email to Coca-Cola’s representative, the plaintiff said that he would sell his rights to the adapted lyrics in exchange for credit for the composition. Id. at *3. The representative replied: “‘You can count on the credits on the track.’” Id. The court held that the email satisfied § 204(a)’s signed writing requirement, and that the representative’s reply email was “an unequivocal acceptance of [plaintiff’s] essential terms (his receiving credit) and at that moment the deal was made and irrevocable.” Id. The court 5 The fact that TMZ has not yet paid Mr. Munaf does not affect the agreement’s validity. TMZ has been and remains ready to pay Mr. Munaf pursuant to the agreement as soon as he submits a W-9 tax form. And, in any event, Mr. Munaf has never claimed that the agreement was terminated due to non-payment. Case 2:15-cv-09512-RSWL-PJW Document 47 Filed 07/12/16 Page 18 of 22 Page ID #:252 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -13- MEMO. OF POINTS & AUTHORITIES CASE NO. 2:15-CV-09512-RSWL-PJW expressly held that the representative’s re-sending of a written contract, and the plaintiff’s later attempt to revoke his prior email, did not affect the validity of the agreement the parties reached. Id. at *3-4; see also Dish Network L.L.C. v. TV Net Solutions, LLC, No. 6:12-cv-1629-Orl-41TBS, 2014 WL 6685366, at *8 n.16 (M.D. Fla. Oct. 10, 2014) (“the fact that the extension of the agreement regarding these channels was completed by email does not render the assignment of the associated copyrights ineffective under § 204”). In sum, Mr. Munaf indisputably owned the copyright in the Taylor Swift Excerpt on December 4, 2015, and he transferred ownership of it to TMZ on that date. Even if Mr. Munaf attempted to transfer ownership of the Taylor Swift Excerpt to Sisyphus on December 6 or later, that attempt was ineffective because Mr. Munaf no longer had any ownership interest to transfer. 2. At A Minimum, TMZ Has An Irrevocable Implied License To Use The Taylor Swift Excerpt To the extent TMZ did not acquire the Taylor Swift Excerpt by express assignment, TMZ nevertheless acquired an implied license to use that Excerpt online. Although Section 204(a) of the Copyright Act requires a written agreement to transfer a copyright, a non-exclusive license is not a transfer and is not subject to this requirement. I.A.E., Inc. v. Shaver, 74 F.3d 768, 775 (7th Cir. 1996). A non- exclusive license may be granted orally; it may even be implied from conduct. Effects Associates, 908 F.2d at 558; I.A.E., 74 F.3d at 775 (courts “universally have recognized that a nonexclusive license may be implied from conduct”). The test for an implied license focuses on objective facts that demonstrate the licensor’s (here, Mr. Munaf’s) intent. John G. Danielson, Inc. v. Winchester-Conant Properties, Inc., 322 F.3d 26, 42 (1st Cir. 2003) (inquiry is not “into the mind of the putative licensor. Rather, it is an objective inquiry into facts that manifest such contractual intent.”); I.A.E., 74 F.3d at 777 (same). Case 2:15-cv-09512-RSWL-PJW Document 47 Filed 07/12/16 Page 19 of 22 Page ID #:253 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -14- MEMO. OF POINTS & AUTHORITIES CASE NO. 2:15-CV-09512-RSWL-PJW In Effects Associates, the plaintiff created special effects footage for the defendant’s motion picture. The defendant was dissatisfied with the plaintiff’s work and only paid it half the contract price. Effects Associates, 908 F.2d at 556. The defendant nevertheless incorporated plaintiff’s special effects into the final film and proceeded to distribute it through a motion picture company, also a defendant. Id. Affirming the district court’s grant of summary judgment of non-infringement to all defendants, the Ninth Circuit held that “‘every objective fact concerning the transaction at issue supports a finding that an implied license existed.’” Id. at 558 n.6 (quoting District Court opinion). Effects created a work at defendant’s request and handed it over, intending that defendant copy and distribute it. To hold that Effects did not at the same time convey a license to use the footage in “The Stuff” would mean that plaintiff’s contribution to the film was “of minimal value,” a conclusion that can’t be squared with the fact that Cohen [a defendant] paid Effects almost $56,000 for this footage. Accordingly, we conclude that Effects impliedly granted nonexclusive licenses to Cohen and his production company to incorporate the special effects footage into “The Stuff” and to New World Entertainment [another defendant] to distribute the film. Id. at 558-59 (quoting Oddo v. Ries, 743 F.2d 630, 634 (9th Cir. 1984)); see also I.A.E., 74 F.3d at 772. As in Effects Associates, “every objective fact” here supports (at a minimum) an implied license from Mr. Munaf to TMZ to use the Taylor Swift Excerpt online. Mr. Munaf’s email exchange with Ms. Hendry confirms that Munaf intended to give TMZ broad rights in the Taylor Swift Excerpt. Ms. Hendry’s email explains that the agreement was for the “outright purchase of 1 video of Jared Leto talking about Case 2:15-cv-09512-RSWL-PJW Document 47 Filed 07/12/16 Page 20 of 22 Page ID #:254 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -15- MEMO. OF POINTS & AUTHORITIES CASE NO. 2:15-CV-09512-RSWL-PJW Taylor Swift.” S.F. ¶ 12; Olasa Decl. Ex. 1 at 4 (emphasis added). Even if this email exchange did not effect a transfer-which it did-the exchange nevertheless demonstrates the breadth of the rights that Mr. Munaf intended to grant TMZ. See Crispin v. Christian Audigier, Inc., 839 F. Supp. 2d 1086, 1092 n.2 (C.D. Cal. 2011) (Collins, J.) (“[S]everal circuits, including the Ninth Circuit, have found that where an attempted oral transfer of copyright fails under section 204(a), a nonexclusive license may nevertheless be implied from the parties’ conduct.”). Moreover, the fact that Mr. Munaf contacted TMZ-a website that reports on celebrity news-to sell it the Taylor Swift Excerpt demonstrates objectively that Mr. Munaf intended to allow TMZ to publish and display the Excerpt on its site. Mr. Munaf’s implied license is irrevocable because it is supported by consideration. See Asset Marketing Sys. v. Gagnon, 542 F.3d 748, 757 (9th Cir. 2008); Lulirama Ltd., Inc. v. Axcess Broadcast Servs., Inc., 128 F.3d 872, 882 (5th Cir. 1997); Sprengel v. Mohr, No. CV 11-08742-MWF, 2013 WL 645532, at *10 (C.D. Cal. Feb. 21, 2013) (“State law dictates the sufficiency of consideration to support a finding of an implied license.”). Under California law, which applies here, the exchange of promises constitutes consideration. Id.; Fosson v. Palace (Waterland), Ltd., 78 F.3d 1448, 1454 (9th Cir. 1996) (applying California law); Cal. Civ. Code § 1605. In Sprengel, for instance, the court concluded that a promise to pay $5,000 constituted consideration under California law. Sprengel, 2013 WL 645532, at *12. As a result, the court determined that the implied, non-exclusive license at issue in that case was irrevocable. Sprengel, 2013 WL 645532, at *12. Here, it is undisputed that TMZ promised Mr. Munaf $2,000 in exchange for the Taylor Swift Excerpt. S.F. ¶ 12, 27. That promise constitutes consideration, which supports both the express assignment and (were the express assignment to fail for other reasons) an irrevocable implied license. In sum, Sisyphus has no basis upon which to sue TMZ for infringement concerning TMZ’s use of the Taylor Swift Excerpt. Case 2:15-cv-09512-RSWL-PJW Document 47 Filed 07/12/16 Page 21 of 22 Page ID #:255 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -16- MEMO. OF POINTS & AUTHORITIES CASE NO. 2:15-CV-09512-RSWL-PJW IV. CONCLUSION For the foregoing reasons, Defendants respectfully request that the Court grant their motion for summary judgment. DATED: July 12, 2016 MUNGER, TOLLES & OLSON LLP By: /s/ Kelly M. Klaus KELLY M. KLAUS Attorneys for Defendants Case 2:15-cv-09512-RSWL-PJW Document 47 Filed 07/12/16 Page 22 of 22 Page ID #:256 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 [PROPOSED] JUDGMENT CASE NO. 2:15-CV-09512-RSWL-PJW JOHN W. SPIEGEL (State Bar No. 78935) john.spiegel@mto.com KELLY M. KLAUS (State Bar No. 161091) kelly.klaus@mto.com KURUVILLA J. OLASA (State Bar No. 281509) kuruvilla.olasa@mto.com MUNGER, TOLLES & OLSON LLP 355 South Grand Avenue Thirty-Fifth Floor Los Angeles, California 90071-1560 Telephone: (213) 683-9100 Facsimile: (213) 687-3702 Attorneys for Defendants UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA, WESTERN DIVISION SISYPHUS TOURING, INC., Plaintiff, vs. TMZ PRODUCTIONS, INC., TMZ.COM, EHM PRODUCTIONS, INC., WARNER BROS. ENTERTAINMENT INC., DOES 1-10, Defendants. Case No. 2:15-CV-09512-RSWL-PJW [PROPOSED] JUDGMENT Judge: Hon. Ronald S.W. Lew Date: August 16, 2016 Time: 10:00 a.m. Crtrm: 21 TMZ PRODUCTIONS, INC., EHM PRODUCTIONS, INC., AND WARNER BROS. ENTERTAINMENT INC., Third Party Plaintiffs, vs. NAEEM MUNAF Third Party Defendant. Case 2:15-cv-09512-RSWL-PJW Document 47-1 Filed 07/12/16 Page 1 of 2 Page ID #:257 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -1- [PROPOSED] JUDGMENT CASE NO. 2:15-CV-09512-RSWL-PJW Defendants’ Motion for Summary Judgment came on for hearing before this Court on August 16, 2016. The Court has considered the issues and issued a decision. Good cause appearing therefor, IT IS ORDERED AND ADJUDGED that Plaintiff Sisyphus Touring, Inc., shall take nothing on its Complaint; that this action shall be and hereby is dismissed on the merits in its entirety with prejudice; and that Defendants shall recover their costs in this action. DATED: _________________ _________________________________ HON. RONALD S.W. LEW UNITED STATES DISTRICT JUDGE Case 2:15-cv-09512-RSWL-PJW Document 47-1 Filed 07/12/16 Page 2 of 2 Page ID #:258