IP/Entertainment Law Weekly Case Update for Motion Picture Studios and Television Networks -- November 16, 2012

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Muller v. Anderson, USCA Second Circuit, November 8, 2012 (unpublished opinion)
 Click here for a copy of the full decision.

  • Circuit court affirms summary judgment in favor of producers and creators of motion picture Alien v. Predator, finding that plaintiff (the author of screenplay The Lost Continent) failed to prove copyright infringement (no evidence of access and no substantial similarity), and while finding that the Copyright Act did not preempt the breach of implied contract claim, the court found no evidence of the existence of a contract.

Plaintiff James Muller, the author and owner of the copyright to a script for a film entitled The Lost Continent (TLC), brought suit for copyright infringement and breach of implied contract against defendant Paul W. S. Anderson, Davis Entertainment, and Twentieth Century Fox Film Corporation, producers and creators of the film Alien vs. Predator (AVP), alleging that he provided persons and entities associated with defendants with copies of TLC and that defendants copied or improperly appropriated TLC in creating AVP. The Second Circuit affirmed the district court’s grant of summary judgment in favor of defendants.

In TLC, a group of scientists, soldiers, and government officials with undisclosed ties to the Freemasons discovers the lost city of Atlantis beneath Antarctica. There, they find a large pyramid containing a magic crystal, and the group is attacked by various inanimate creatures that have come to life. In AVP, a group of scientists and soldiers discovers a pyramid off the coast of Antarctica containing an Alien queen, a well-known beast from the Alien film series. The group then finds itself in the middle of a battle between the Aliens and creatures from the Predator film series.

The district court granted summary judgment in favor of defendant on plaintiff’s copyright infringement claim, finding that plaintiff had not adduced evidence either that defendants had access to TLC and that TLC and AVP exhibited similarities probative of copying, or that AVP and TLC were so strikingly similar as to preclude the possibility of independent creation. The Second Circuit affirmed, finding that no reasonable jury could find actual copying or improper appropriation.

The district court also granted summary judgment on plaintiff’s claim for breach of an implied contract, finding that the Copyright Act preempted the contract claim. The Second Circuit disagreed, finding that the Copyright Act does not preempt claims alleging that defendants breached a contract containing a promise to pay. According to the court, no difference exists for preemption purposes between a breach of contract claim alleging an express agreement to pay and one alleging that the parties had an implied agreement to pay and that defendant used plaintiff’s ideas without remuneration. Although the Second Circuit disagreed with the district court’s reasoning, it affirmed the judgment in favor of defendants, finding that plaintiff adduced no evidence of the existence of an implied agreement between him and defendants.

MVP Entertainment v. Frost, Cal. Court of Appeal, Second District, November 7, 2012
 Click here for a copy of the full decision.

  • California intermediate court of appeal affirms grant of summary judgment in favor of defendants, author, and holder of copyright in book in plaintiffs’ action alleging breach of contract, among other claims, finding that lawyer for defendants did not have actual authority to transfer the copyright, and his e-mail acknowledging receipt of the general economic terms of the proposed deal was not a written agreement to transfer copyright as required by the Copyright Act.

Plaintiffs, MVP Entertainment and its president, Robert Frederick, brought suit against defendants, Mark Frost, author of the book The Match: The Day the Game of Golf Changed Forever, and Good Comma Ink, to which Frost assigned the copyright and of which Frost is the sole owner, asserting breach of contract, promissory estoppel, declaratory relief, and negligent misrepresentation based on MVP’s claim that defendants entered a contract or promised MVP they would enter into a contract to allow MVP to make a movie of The Match. The lower court granted summary judgment in favor of defendants, and the court of appeal affirmed, concluding that Section 204 of the Copyright Act requires a written agreement to transfer copyright in a work by the holder or a duly authorized agent, that the lawyer for defendants did not have actual authority to transfer the copyright in the book, and that his e-mail acknowledging receipt of the general economic terms of the proposed deal was not a written agreement to transfer the copyright as required by the Copyright Act.

In 2008 and 2009, lawyers for both parties corresponded regarding MVP’s potential acquisition of the copyright in The Match in order to make a movie. On April 30, 2009, William Jacobson, on behalf of plaintiffs, sent Alan Wertheimer, defendants’ lawyer, an e-mail proposing certain deal terms and stating, “Let me know if this is okay and we’ll send paperwork....” Wertheimer responded: “Done...thanks! Werth.” Although Jacobson subsequently sent Wertheimer the proposed agreement and requested that Wertheimer get defendants to sign it, the parties never executed a formal agreement. Shortly thereafter, Frost told Frederick that he did not want MVP to make the movie, and plaintiffs brought suit, alleging that Wertheimer’s e-mail was signed by the lawyer and created a binding contract. The lower court granted summary judgment in favor of Frost and Good Comma Ink, based on section 204 of the Copyright Act, which requires that a transfer of ownership in copyright be in writing and signed by the owner or the owner’s duly authorized agent.

The court of appeal affirmed, holding that Section 204 clearly requires a writing to transfer ownership of copyright by the owner or a duly authorized agent and that the evidence was undisputed that Wertheimer did not have actual authority to transfer the copyright in Frost’s book. According to the affidavits in support of defendants’ motion for summary judgment, the lawyer negotiated deals on behalf of Frost and Good Comma Ink, but did not sign contracts. Wertheimer also stated that he did not intend his e-mail that stated “Done...thanks!” to convey any of Frost’s rights, but to simply note that the parties were in accord on the broad economic terms of a deal and that Wertheimer did not intend his typed nickname “Werth” to constitute a signature or to bind himself or Frost to anything. Frost also stated that he had not given Wertheimer actual authority to transfer rights in his intellectual property, including rights in The Match.

The appellate court also rejected plaintiffs’ argument that Wertheimer had ostensible authority to transfer the copyright in The Match, since ostensible authority is insufficient under Section 204 to transfer the copyright, and plaintiffs’ belief that Wertheimer had this authority was irrelevant. The court concluded that plaintiffs’ failure to raise a triable issue of fact with respect to transfer under Section 204 defeated all their claims.


For more information, please contact Jonathan Zavin at jzavin@loeb.com or at 212.407.4161.

Westlaw decisions are reprinted with permission of Thomson/West. If you wish to check the currency of these cases, you may do so using KeyCite on Westlaw by visiting http://www.westlaw.com/.

Circular 230 Disclosure: To assure compliance with Treasury Department rules governing tax practice, we inform you that any advice (including in any attachment) (1) was not written and is not intended to be used, and cannot be used, for the purpose of avoiding any federal tax penalty that may be imposed on the taxpayer, and (2) may not be used in connection with promoting, marketing or recommending to another person any transaction or matter addressed herein.

Published In: Art, Entertainment & Sports Updates, Civil Procedure Updates, Civil Remedies Updates, General Business Updates, Intellectual Property Updates

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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