Case 2:15-cv-09512-RSWL-PJW Document 60 Filed 07/26/16 Page 1 of 26 Page ID #:385

1 KING, HOLMES, PATERNO & SORIANO, LLP
HOWARD E. KING, ESQ., STATE BAR NO. 77012
2 SETH MILLER, ESQ., STATE BAR NO. 175130
SMILLER@KHPSLAW.COM
TH
3 1900 AVENUE OF THE STARS, 25 FLOOR
LOS ANGELES, CALIFORNIA 90067-4506
4 TELEPHONE: (310) 282-8989
FACSIMILE: (310) 282-8903
5
Attorneys for Plaintiff SISYPHUS
6 TOURING, INC.
7
8

UNITED STATES DISTRICT COURT

9

CENTRAL DISTRICT OF CALIFORNIA, WESTERN DIVISION

10
11 SISYPHUS TOURING, INC.,
Plaintiff,

12
vs.

13

14 TMZ PRODUCTIONS, INC., a
California corporation; TMZ.com, a
15 fictional entity of unknown form; EHM
PRODUCTIONS, INC., a California
16 corporation; WARNER BROS.
ENTERTAINMENT, INC., a Delaware
17 corporation; and DOES 1-10, inclusive,
Defendants.

18
19
20 / / /
21 / / /
22 / / /
23 / / /
24 / / /
25 / / /
26 / / /
27 / / /
28 / / /
3483.062/1051140.1

CASE NO. 2:15-cv-09512-RSWL (PJWx)
Hon. Ronald S. W. Lew, Courtroom 21
PLAINTIFF’S OPPOSITION TO
DEFENDANTS’ MOTION FOR
SUMMARY JUDGMENT;
DECLARATIONS OF JARED
ROSENBERG AND SETH MILLER
Date: August 16, 2016
Time: 10:00 a.m.
Crtrm.: 21
Action Commenced: December 9, 2015
Trial Date:
January 10, 2017

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TABLE OF CONTENTS

1

Page

2
3
4
5
6

I. INTRODUCTION .................................................................................................... 1 
II. UNDISPUTED MATERIAL FACTS AND GENUINE DISPUTES .................... 3 
A. 

The Work for Hire Agreement Between Plaintiff and Mr. Munaf ......... 3 

B. 

Defendants’ December 4, 2016, Email Exchange with Mr.
Munaf ...................................................................................................... 5 

7

8 III. ARGUMENT ......................................................................................................... 6 
9

A. 

Standard for Granting Summary Judgment ............................................ 6 

10

B. 

11

Plaintiff Owns the Munaf Video (and Taylor Swift Excerpt) as a
Work For Hire – The Parties Agreed Orally and In Writing to
That Effect ............................................................................................... 7 

12

1. 

The Munaf Video Is a Work for Hire Under the Copyright
Act ................................................................................................. 7 

2. 

The Non-Disclosure Agreement Complies With the Act
Because It Confirms the Parties’ Oral Agreement Prior to
Creation of the Munaf Video ........................................................ 8 

3. 

Defendants Cannot Challenge Plaintiff’s Ownership of the
Munaf Video – Plaintiff and Mr. Munaf Both Agree that
Plaintiff Is the Sole Owner ......................................................... 11 

13
14
15
16
17

B. 

At a Minimum, Plaintiff Owns the Munaf Video As an Assignee
of Mr. Munaf’s Rights Under Their Oral and Non-Disclosure
Agreements ........................................................................................... 12 

C. 

20

The December 4 Email Exchange Did Not Give Defendants an
Express or Implied License to Publish the Munaf Video ..................... 14 

21

1. 

The Email Exchange Does Not Purport to Transfer
Copyright or Grant Any Copyright License to TMZ—It
Concerns Sale of a Material Object ............................................ 15 

23

2. 

The Email Exchange Is Not Signed by Mr. Munaf .................... 16 

24

3. 

The Email Exchange Did Not Create an Implied License ......... 19 

18
19

22

25 IV. CONCLUSION ................................................................................................... 21 
26
27
28
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TABLE OF AUTHORITIES

1

Page

2
3
4
5

CASES 
Andreas Carlson Prods., AB v. Barnes,
2012 WL 236691 (C.D. Cal. June 18, 2012) .................................................. 10

6 Bangkok Broadcasting & T.V. Co., Ltd., v. IPTV Corp.,
742 F.Supp.2d 1101 (C.D. Cal. 2010)....................................................... 19, 20
7
Campinha-Bacote v. Rearden,
2011 WL 1343343 (D. Alaska April 8, 2011) .................................. 1, 9, 10, 11
8
9 Compaq Computer Corp. v. Ergonome Inc.,
210 F. Supp. 2d 839 (S.D. Tex. 2001) .............................................................. 9
10
Corbello v. DeVito,
777 F.3d 1058 (9th Cir. 2015) ................................................................... 19, 20
11
12 Dish Network, L.L.C. v. TV Net Solutions, LLC,
2014 WL 6685366 (M.D. Florida Oct. 10, 2014) ........................................... 18
13
Eden Toys, Inc. v. Florelee Undergarment Co.,
697 F.2d 27 (2d Cir. 1982) ........................................................................ 12, 13
14
15 Effects Associates, Inc. v. Cohen,
908 F.2d 555 (9th Cir. 1990) .................................................................... passim
16
Ford Motor Co. v. Titan Enter. Inc.,
2015 WL 9272814 (C.D. Cal. Dec. 18, 2015) ............................................ 6, 14
17
v. County of Marin,
18 Gladwell Government Services
265 Fed.Appx. 624 (9th Cir. 2008) .................................................................. 10
19
Klein v. Delbert Servs. Corp.,
2015 WL 1503427 (N.D. Cal. Apr. 1, 2015) .................................................. 19
20
v. Rice,
21 Konigsberg Intern. Inc.
16 F.3d 355 (9th Cir. 1994) .............................................................................. 14
22
Los Angeles Times v. Free Republic,
2000 WL 565200 (C.D. Cal. April 4, 2000) ..................................................... 6
23
24 Magnuson v. Video Yesteryear,
85 F.3d 1424 (9th Cir. 1996) ................................................................ 11, 12, 13
25
Metropolitan Regional Information Systems, Inc. v. American Home Realty
Network, Inc.,
26
729 F.3d 591 (4th Cir. 2013) ........................................................................... 18
27
Montwillo v. Twill,
632 F. Supp. 2d 917 (N.D. Cal. 2008) ............................................................ 21
28
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1 Newton v. Am. Debt Servs., Inc.,
854 F. Supp. 2d 712 (N.D. Cal. 2012) ............................................................ 19
2
Playboy Enterprises, Inc. v. Dumas,
53 F.3d 549 (2d Cir. 1995) .................................................................. 1, 8, 9, 10
3
4 Radio Television Espanola, S.A. v. New World Enter., Inc.,
183 F.3d 922 (9th Cir. 1999) ............................................................... 11, 12, 15
5
Schiller v. Schmidt, Inc.
v. Nordisco Corp.,
th
969 F.2d 410 (7 Cir. 1992) ............................................................................ 11
6
7 Stanacard, LLC v. Rubard, LLC,
2016 WL 462508 (S.D.N.Y. Feb. 3, 2016) ................................................. 9, 10
8
Stewart Title of California, Inc.
v. Fidelity Nat. Title Co.,
th
279
Fed.Appx.
473
(9
Cir. 2008) .................................................................. 13
9
10 Valente-Kritzer Video v. Pinckney,
881 F.2d 772 (9th Cir. 1995) ..................................................................... 11, 13
11
Vergara Hermosilla v. Coca-Cola Co.,
2011 WL 744098 (S.D. Florida Feb. 23, 2011) .............................................. 18
12
13 Warren v. Fox Family Worldwide, Inc.,
328 F.3d 1136 (9th Cir. 2003) ........................................................................... 7
14
Weinstein Co. v. Smokewood Entm't Grp., LLC,
664 F. Supp. 2d 332 (S.D.N.Y. 2009) ............................................................. 16
15
16
17 STATUTES 
18 17 United States Code § 101 ..................................................................................... 10
19 17 United States Code § 202 ................................................................................. 3, 15
20 17 United States Code § 204 ................................................................... 12, 17, 18, 19
21 17 United States Code § 7001 ............................................................................. 17, 18
22 Federal Rules of Civil Procedure, Rule 56 .................................................................. 6
23
24
25
26
27
28
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1

MEMORANDUM OF POINTS AND AUTHORITIES

2

I.

3

INTRODUCTION
Defendants’1 Motion for Summary Judgment (Doc. 47) omits to mention, let

4

5 alone address, one critical fact that is dispositive of the Motion: before Naeem
6 Munaf had filmed any footage of Jared Leto on September 8, 2015, Plaintiff2 and
7 Mr. Munaf orally agreed that any footage that Mr. Munaf shot that day and all rights
8 thereto would belong to Plaintiff, i.e., as a work for hire. The Non-Disclosure
9 Agreement that the parties signed several months later in December 2015 merely
10 confirmed the prior oral agreement that Mr. Munaf’s footage was a work for hire.
The existence of an oral agreement prior to creation of the footage requires

11

12 denial of the Motion.3 The cases cited by Defendants involve only post-creation
13 written agreements. None of those cases involves an oral work for hire agreement
14 prior to creation of the work and a written agreement confirming the work for hire
15 post-creation. Cases that have considered this fact pattern have held that a post16 creation written work for hire agreement is valid when it memorializes a pre17 creation “explicit or implicit” agreement that the work is for hire. Playboy
18 Enterprises, Inc. v. Dumas, 53 F.3d 549, 559 (2d Cir. 1995); Campinha-Bacote v.
19 Rearden, 2011 WL 1343343 at *3 (D. Alaska April 8, 2011)(citing Playboy; an
20 author’s post-creation affidavit that the work was made for hire was held sufficient
21 to rebut argument that the plaintiff was not the owner)(summary judgment denied).
22
23

1

Defendants MBLC Productions, Inc., formerly called and sued as TMZ
24 Productions, Inc., TMZ.com, EHM Productions, Inc., and Warner Bros.
Entertainment, Inc. (collectively, “Defendants” or “TMZ”).
25 2
Plaintiff Sisyphus Touring, Inc. (“Plaintiff”).
26 3
The oral agreement with Plaintiff that requires denial of the Motion was testified to
27 by Mr. Munaf and disclosed in discovery. (Declaration of Seth Miller (“Miller
28 Decl”), ¶ 4; Declaration of Naaem Munaf [“Munaf Decl”], ¶¶ 1-7, Exhibit A.)
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1

Here, the parties’ oral work for hire agreement on September 8, 2015—prior

2 to creation of the Munaf footage—is memorialized in the written Non-Disclosure
3 Agreement several months later and hence is valid under the Copyright Act. The
4 footage shot by Mr. Munaf, therefore, is a work for hire, and thus Mr. Munaf never
5 had any copyright interest or other rights in that footage to transfer to Defendants.
6

To the extent Plaintiff disputes that there was an oral agreement—and there is

7 no evidence to the contrary—the existence of this disputed fact means that the work
8 for hire issue cannot be determined on this Motion and must be submitted to a jury.
9

If Plaintiff does not dispute the prior oral agreement, then under the

10 applicable law, the Munaf footage is a work for hire, Plaintiff owns the copyright in
11 it, and Mr. Munaf never owned or had any copyright to transfer to Defendants.
12

The oral work for hire agreement requires denial of the Motion.

13

Moreover, to the extent the Munaf footage is not a work for hire, then

14 Mr. Munaf assigned his rights in all the footage to Plaintiff under the September 8,
15 2015, oral agreement and written Non-Disclosure Agreement confirming same. The
16 law does not require any “magic language” or a “Magna Charta” to comply with the
17 Copyright Act’s requirement of a writing. Effects Associates, Inc. v. Cohen, 908
18 F.2d 555, 557 (9th Cir. 1990). Here, the clear intent of Plaintiff and Mr. Munaf is
19 that Plaintiff would own the copyright. Defendants have no standing or basis to
20 dispute Plaintiff’s ownership as agreed to by Plaintiff and Mr. Munaf. Mr. Munaf
21 did not transfer any rights in the footage to TMZ because he never had any, as he
22 agrees.
23

Moreover, even assuming arguendo that Mr. Munaf had owned the copyright

24 on December 4, 2015 (the date of his emails with TMZ), he never granted a license
25 to Defendants. The December 4, 2015, email exchange between Mr. Munaf and
26 TMZ, which Defendants contend gave them a license from Mr. Munaf to use the
27 Taylor Swift footage on TMZ.com, is not signed by Mr. Munaf and hence is not a
28 valid copyright transfer under the Act. The email exchange also does not purport to
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1 transfer any copyrights in the Taylor Swift footage—it purports to transfer only a
2 physical copy of the Munaf footage (“… TMZ will pay you $2,000.00 USD for the
3 outright purchase of 1 video of Jared Leto talking about Taylor Swift …”).
4 “Transfer of ownership of any material object, including the copy or phonorecord in
5 which the work is first fixed, does not of itself convey any rights in the copyrighted
6 work embodied in the object.” 17 U.S.C. § 202. Defendants did not obtain any
7 express copyright license or transfer from Mr. Munaf on December 4, 2015.
There also was no implied license from Mr. Munaf\ because implied licenses

8

9 are a narrow exception and are limited to circumstances where the author creates the
10 work at the request of the alleged licensee for the licensee to use. Effects, 908 F.2d
11 at 558. Here, Mr. Munaf created the footage at the request of Plaintiff for Plaintiff
12 to use. Mr. Munaf then illicitly purported to sell portions of the footage to TMZ.
13 This is not a narrow circumstance where TMZ hired Mr. Munaf to film the footage.
14 No “license” can be implied under the narrow exception set forth in Effects, supra.
The Court should deny the Motion in its entirety.

15
16

II.

17

UNDISPUTED MATERIAL FACTS AND GENUINE DISPUTES

18 A.

The Work for Hire Agreement Between Plaintiff and Mr. Munaf

19

On September 8, 2015, Jared Rosenberg, a representative of Plaintiff,

20 contacted third-party defendant Naeem Munaf about shooting video footage of
21 Mr. Leto in the recording studio in Mr. Leto’s home. (Stipulated Facts for Summary
22 Judgment Motions (Doc. 40) [“SF”], filed 07/11/2016, Fact 3.)
23

On the evening of September 8, 2015, Mr. Munaf went to Mr. Leto’s studio

24 and shot video footage of Mr. Leto in his studio (the “Munaf Video”). (SF, Fact 5.)
25

Before Mr. Munaf arrived at Mr. Leto’s home or had filmed any footage of

26 Mr. Leto, Mr. Rosenberg and Mr. Munaf orally agreed that the footage shot by
27 Mr. Munaf on September 8, 2015, and all rights, including copyrights, in and to the
28 footage would belong to Plaintiff. Mr. Rosenberg advised Mr. Munaf that he would
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1 send him a non-disclosure agreement to sign in due course in connection with his
2 work on September 8, 2015. (Statement of Genuine Disputes [“GD”], Fact 1.)
Plaintiff agreed to pay Mr. Munaf thirty dollars ($30.0) per hour for his work

3

4 filming Mr. Leto on September 8, 2015. Mr. Munaf spent two hours filming
5 Mr. Leto on September 8, 2015, and on December 7, 2015, Plaintiff paid Mr. Munaf
6 sixty dollars ($60.00) for his work on September 8, 2015. (GD, Fact 2.)
On December 7, 2015, Mr. Munaf signed a Non-Disclosure Agreement,

7

8 which Plaintiff also signed. The Non-Disclosure Agreement states inter alia
9 “Acknowledged and agreed as of this date: 9/8/15, 2015.” (SF, Fact 28; Declaration
10 of Seth Miller (“Miller Decl”), Exh. A (Non-Disclosure Agreement)). The Non11 Disclosure Agreement between Plaintiff and Mr. Munaf provides, in relevant part:
This agreement (“Agreement”) sets forth the understanding between
Sisyphus Touring, Inc., … and related entities, persons and
companies affiliated therewith, including without limitation Jared
Leto … (hereinafter severally and collectively referred to as
“Company,” “we” or “us”) on one hand, and Naeem Munaf
(hereinafter referred to as “you”), Glendale, CA (address) on the
other hand, with respect to your services performed for us, from
inception, regardless of when where such services were performed,
and any and all materials created in connection therewith. In the
course of such services, we may allow you access to creative,
personal, financial, business, technical and other confidential
information, materials and/or ideas with respect to Artist and us. All
such information and materials shall be referred to herein severally
and collectively as “Proprietary Materials,” which term shall include,
without limitation, anything you may learn or discover as a result of
exposure to, analysis of or contribution to any Proprietary Materials
in the course of performing your services hereunder or otherwise.

12
13
14
15
16
17
18
19
20

You acknowledge and agree that this Agreement does not grant you
any license in or any ownership or rights in or to any of the
Proprietary Materials or any portions thereof or the rights to use,
exploit, transfer, share, transmit, broadcast or retain the Proprietary
Materials in any manner, medium or form. 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-for-hire, worldwide in perpetuity.

21
22
23
24
25

26 (Miller Decl, Exh. A, p. 1 (emphasis added); see also Declaration of Naeem Munaf
27 [“Munaf Decl”], ¶¶ 1-7, Exh. A.)
28 / / /
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On December 7, 2015, Plaintiff registered four excerpts of the Munaf Video

1

2 (the “Deposited Footage”) with the Copyright Office. (SF, Fact 30.)
On December 7, 2015, an approximately 1 minute and 10 second excerpt of

3

4 the Munaf Video in which Mr. Leto discusses Taylor Swift’s music (the “Taylor
5 Swift Excerpt”) was published on TMZ.com. (SF, Fact 23.)
The Taylor Swift Excerpt has been published continuously on TMZ.com from

6

7 December 7, 2015, through the present. (SF, Fact 33.)
The Deposited Footage contains, inter alia, all of the excerpts from the Munaf

8

9 Video used in the Taylor Swift Excerpt. (SF, Fact 30.)
10 B.

Defendants’ December 4, 2016, Email Exchange with Mr. Munaf

11

On December 4, 2015, Nikki Hendry, a TMZ representative, sent Mr. Munaf

12 an email, stating inter alia:
13
14
15
16

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 ‘I 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. A check will be sent to you in the next 2-3 weeks.

17
18 (SF, Fact 12)(emphasis added).
19

Ms. Hendry attached to her email W-9 forms and an unsigned letter contract,

20 which states, inter alia:
21
22
23
24
25
26
27

EHM Productions, Inc. d/b/a TMZ (“TMZ”) offers to purchase
outright from you 1 video of Jared Leto talking about Taylor Swift
(the “Material”) for the total amount of $2,000.00 USD. You may
reaffirm your acceptance of TMZ’s offer by countersigning this
letter.
By accepting this offer, you acknowledge that TMZ has agreed to
make the Payment to you based on your representation to TMZ that
you are able to enter into this agreement without any obligations to
any third party. You further acknowledge that TMZ shall be the
exclusive owner of the Material for use in all media now known or
later devised, throughout the universe, in perpetuity, and that you
will not use, exhibit or grant any rights in the Material to any third
party without TMZ’s prior written consent.

28
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1 (SF, Facts 12-13; Declaration of Kuruvilla J. Olasa [Olasa Decl”], ¶ 1, Exh, 1.)
On December 4, 2015, Mr. Munaf responded to Ms. Hendry’s email as

2

3 follows: “I agree. Sending video to Anthony. I will send these forms back soon.”
4 (SF, Fact 14; see also Olasa Decl, ¶ 2, Exh, 2.)
Mr. Munaf has not returned to TMZ the signed contract or completed W-9

5

6 form. (SF, Fact.26.)
TMZ has not paid Mr. Munaf the $2,000.00 or any portion thereof. (SF,

7

8 Fact.26.)
The Taylor Swift Excerpt was published on TMZ.com on December 7, 2015,

9

10 at 1:00 a.m. on TMZ.com. (SF, Fact 23.) Fourteen (14) minutes after the Taylor
11 Swift Excerpt was published, Mr. Munaf sent TMZ an email stating: “do not post
12 the footage. i do not own it. i do not have permission. i will not be signing any w-9
13 or agree to get paid forms.” (Id., Fact 24.)
14

III.

15

ARGUMENT

16 A.

Standard for Granting Summary Judgment

17

“A party may move for summary judgment, identifying each claim or defense

18 … on which summary judgment is sought.” Fed. R. Civ. P. 56(a). “The court shall
19 grant summary judgment if the movant shows that there is no genuine dispute as to
20 any material fact and the movant is entitled to judgment as a matter of law.” Id.
21

“If the moving party meets its initial burden, the nonmoving party must then

22 set forth … ‘specific facts showing that there is a genuine issue for trial.’” Los
23 Angeles Times v. Free Republic, 2000 WL 565200 at *3 (C.D. Cal. April 4,
24 2000)(citing Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250 (1986)). On a
25 motion for summary judgment, the defendant bears the burden of proof with respect
26 to its affirmative defenses. Ford Motor Co. v. Titan Enter. Inc., 2015 WL 9272814,
27 at *5 (C.D. Cal. Dec. 18, 2015)(citing In re Oracle Corp. Securities Litigation, 627
28 F.3d 376, 387 (9th Cir. 2010)).
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1 B.

Plaintiff Owns the Munaf Video (and Taylor Swift Excerpt) as a Work

2

For Hire – The Parties Agreed Orally and In Writing to That Effect

3

1.

4

The Copyright Act “provides that copyright ownership ‘vests initially in the

The Munaf Video Is a Work for Hire Under the Copyright Act

5 author or authors of the work.’” Warren v. Fox Family Worldwide, Inc., 328 F.3d
6 1136, 1140 (9th Cir. 2003)(citing 17 U.S.C. § 201(a)). “However, if the work is
7 made for hire, ‘the employer or other person for whom the work was prepared is
8 considered the author ..., and, unless the parties have expressly agreed otherwise in a
9 written instrument signed by them, owns all the rights in the copyright.” Id. (citing
10 17 U.S.C. § 201(b)).
Section 101 of the Copyright Act defines a “work made for hire” as:
(1) a work prepared by an employee within the scope of his or her
employment; or (2) a work specially ordered or commissioned for
use ... as a part of a motion picture or other audiovisual work, ... if
the parties expressly agree in a written instrument signed by them
that the work shall be considered a work made for hire.

11
12
13
14

15 Id. (citing 17 U.S.C. § 101).
Here, the Munaf Video was commissioned by Plaintiff as an audiovisual

16

17 work, including that Plaintiff hired Mr. Munaf and paid him Mr. Munaf for his
18 services in filming the Munaf Video for Plaintiff. (SF, Facts 3, 5, 28; GD, Facts
19 1-2.) The parties agreed orally on September 8, 2015, that Plaintiff would own all
20 rights, including the copyright, in the Munaf Video that Mr. Munaf would film that
21 evening at Mr. Leto’s home. (GD, Fact 1.) The parties agreed in writing on
22 December 7, 2015, that the Munaf Video “shall be owned exclusively by us
23 [Plaintiff] as a work-for-hire.” (SF, Fact 28; Miller Decl, Exh. A, 1.)4
24
25

4

The title or specific wording of the Non-Disclosure Agreement do not affect the
26 analysis here since it clearly states that all materials created by Mr. Munaf shall be a
“work-for-hire” owned by Plaintiff, and there are no “talismanic” words required by
27 the Act. Warren, 328 F.3d at 1141 (“there is no requirement, either in the Act or in
28 the caselaw, that work-for-hire contracts include any specific wording”); see also id.
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1

The parties orally agreed pre-creation that the Munaf Video would be a work-

2 for-hire, and Plaintiff and Mr. Munaf confirmed that agreement in the post-creation
3 Non-Disclosure Agreement. There is no dispute between Plaintiff and Mr. Munaf
4 that the Munaf Video from its inception was owned by Plaintiff as a work-for-hire.
5

2.

The Non-Disclosure Agreement Complies With the Act Because It

6 Confirms the Parties’ Oral Agreement Prior to Creation of the Munaf Video
7

A post-creation written work-for-hire agreement that “confirms a prior

8 agreement, either explicit or implicit, made before the creation of the work” that the
9 work is made for hire complies with the writing requirement of the Copyright Act.
10 Playboy, 53 F.3d at 559. In Playboy, a deceased artist, Nagel, had created artwork
11 for Playboy magazine and had signed a series of checks from Playboy that had a
12 legend stating that his artworks were works-made-for-hire. The court held that,
13 since the legends on the checks confirmed that Nagel had rendered services on a
14 “work-for-hire basis, they meet the statutory writing requirement if they were signed
15 by both Playboy and Nagel and if Playboy can show that the parties had an
16 understanding before the creation of each work, that the works were to be made for
17 hire.” Id. There was no direct evidence of any pre-creation understanding regarding
18 the work-made-for-hire issue. The court held that, while Nagel’s endorsement of
19 the first check “may not evidence his pre-creation consent to a work-for-hire
20 relationship, … beginning with the second check containing [the legend
21 acknowledging “services rendered on a work-made-for-hire basis”], Nagel’s
22 endorsement of Playboy’s checks constitutes sufficient evidence that the parties
23 agreed before the creation of each work that it would be made for hire.” Id. at 560.
24 The appellate court remanded for the district court to determine whether third parties
25
26
27 at 1142 (“nothing in the Act or in our caselaw indicates that an agreement’s title is a
28 dispositive factor in determining whether a work-for-hire relationship exists”).
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1 who had signed some checks were “agents authorized to enter into a work-for-hire
2 relationship on Nagel’s behalf.” Id. at 560.
3

In Campinha-Bacote, supra, the plaintiff sued over alleged infringement of a

4 copyright in a logo that had been created for the plaintiff by an artist, Cynthia
5 Thomas, in 1991. The plaintiff had no pre-creation written work-for-hire
6 agreement, but in opposing summary judgment, the plaintiff submitted an affidavit
7 from Ms. Thomas stating that she had created the logo as a work for hire. The
8 District Court of Alaska, citing Playboy, held that the post-creation affidavit was
9 sufficient to rebut the argument that the plaintiff did not own the logo, and the court
10 denied summary judgment. Campinha-Bacote, 2011 WL 1343343, at *3.
11

In Stanacard, LLC v. Rubard, LLC, 2016 WL 462508 (S.D.N.Y. Feb. 3,

12 2016), the court held that a non-disclosure agreement signed after creation of certain
13 computer programs, and which contained language stating that the author’s services
14 in creating the source code were “works for hire,” met the writing requirement of
15 Section 101 of the Copyright Act “assuming, of course … that the parties had an
16 understanding, before the creation of the work, that the programs were to be created
17 as works for hire.” Id. at *9. As the Court summarized the work-for-hire issue:
18
19

For purposes of the “work for hire” doctrine under the Copyright Act
…, the relevant issue is what both parties … understood (whether
they wrote it down or not) prior to creation of the work.

20 Id. at *9 (emphasis in original).
21

The Stanacard court observed that “neither party seems to have grasped that

22 the parties’ intention at the outset of the relationship is the issue on which the whole
23 ‘work-for-hire’ agreement turns.” Id. The court found a triable issue of fact
24 regarding work for hire but resolved the motion by holding that the non-disclosure
25 agreement was an assignment of the author’s copyright in the programs. Id. at *10;
26 see also Compaq Computer Corp. v. Ergonome Inc., 210 F. Supp. 2d 839, 843 (S.D.
27 Tex. 2001)(holding “that the Second Circuit's rule [set forth in Playboy, supra]
28 appropriately allows for a flexible, case-by-case inquiry into the existence of a
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1 work-for-hire agreement,” adopting it, and noting that “the Fifth Circuit has deemed
2 the Second Circuit to be ‘the de facto Copyright Court of the United States’”).
As these cases demonstrate, if both parties understand prior to creation of a

3

4 work that it will be a work-made-for-hire, then a post-creation writing confirming
5 their agreement complies with the writing requirement of the Act, 17 U.S.C. § 101.
6

Here, there was a pre-creation oral agreement confirmed in a later writing:

7



8



9
10



11



12
13

On September 8, 2015, Mr. Rosenberg contacted Mr. Munaf about
shooting video footage (SF, Fact 3);
On September 8, 2015, before Mr. Munaf arrived at Mr. Leto’s home
or had filmed any video footage of Mr. Leto, Mr. Rosenberg and Mr.
Munaf orally agreed that Plaintiff would own all copyrights in the
footage shot by Mr. Munaf on September 8, 2015 (GD, Fact 1);
After the oral agreement was made, on the evening of September 8,
2015, Mr. Munaf arrived at Mr. Leto’s home and filmed the Munaf
Video (SF, Fact 5); and
On December 7, 2015, Mr. Munaf signed the Non-Disclosure
Agreement, which Plaintiff also signed, confirming inter alia that all of
the footage shot by Mr. Munaf in providing services would be owned
by Plaintiff as a “work-for-hire.” (SF, Fact 28; Miller Decl, Exh. A).

The Non-Disclosure Agreement memorializes the parties’ prior oral

14

15 agreement. It is valid and enforceable and complies with the Copyright Act.
16 Playboy, 53 F.3d at 559; Stanacard, 2016 WL 462508 at *9, Campinha-Bacote,
17 2011 WL 1343343, at *3. Plaintiff owns the Munaf Video as a work for hire.
The authorities cited by Defendants in their Opposition are inapposite because

18

19 they do not involve pre-creation oral agreements. Andreas Carlson Prods., AB v.
20 Barnes, 2012 WL 236691 at *5 (C.D. Cal. June 18, 2012)(treatment written two
21 months prior to when written agreement was signed “cannot be a ‘work-made-for22 hire’”)(no oral agreement alleged); Gladwell Government Services v. County of
23 Marin, 265 Fed.Appx. 624, 626 (9th Cir. 2008)5 (the defendant “could not acquire
24 copyright ownership … through a work-for-hire agreement” in materials that pre25 existed the defendant’s written agreement with plaintiff)(no oral agreement
26
27

5

As correctly explained in the Opposition (p. 8, fn. 3), as an unpublished Ninth
28 Circuit opinion, Gladwell is not binding precedent and is only “persuasive.”
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1 alleged); Schiller v. Schmidt, Inc. v. Nordisco Corp., 969 F.2d 410 (7th Cir.
2 1992)(work for hire statement “came too late” when it was signed more than five
3 years after creation of the work)(no oral agreement alleged). Defendants rely on
4 unpublished Ninth Circuit and District Court opinions and a Seventh Circuit
5 opinion—and none of them involve a pre-creation oral agreement, the sole issue
6 here.
7

The Ninth Circuit has never addressed the specific issue in Playboy, but the

8 District of Alaska has, and it followed Playboy. Campinha-Bacote, 2011 WL
9 1343343, at *3. In the context of copyright assignments, the Ninth Circuit has held
10 that post-transfer writings comply with the writing requirement of the Copyright Act
11 if they confirm a pre-transfer oral agreement to transfer the copyright. Valente12 Kritzer Video v. Pinckney, 881 F.2d 772, 775 (9th Cir. 1995) (“If an oral transfer of
13 a copyright license is later confirmed in writing, the transfer is valid”); Magnuson v.
14 Video Yesteryear, 85 F.3d 1424, 1428-29 (9th Cir. 1996) (“under some
15 circumstances a prior oral grant that is confirmed by a later writing becomes valid as
16 of the time of the oral grant, even if the writing is subsequent to the initiation of
17 litigation on the copyright infringement”); see also more detailed discussion in
18 Section B, infra.
19

3.

Defendants Cannot Challenge Plaintiff’s Ownership of the Munaf

20 Video – Plaintiff and Mr. Munaf Both Agree that Plaintiff Is the Sole Owner
21

Plaintiff and Mr. Munaf both agree that the Munaf Video is owned by

22 Plaintiff as a work for hire. (GD, Fact 1.) Where the author of a work and a party
23 claiming copyright ownership pursuant to a transfer both agree that the author’s
24 transfer of copyright to the owner was valid, third party infringers cannot challenge
25 the validity of the claimed ownership as it does not serve the purposes of the
26 Copyright Act to allow such third party challenges. Radio Television, 183 F.3d at
27 929 (“Courts have held that in situations ‘in which the copyright holder appears to
28 have no dispute with its licensee on [the issue of transfer], it would be anomalous to
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1 permit a third party infringer to invoke this provision against the licensee’”)(citing
2 numerous cases); Magnuson v. Video Yesteryear, 85 F.3d 1424, 1428-29 (9th Cir.
3 1996)(same) (affirming oral transfer of copyright affirmed by subsequent
4 memorandum of transfer where there was no dispute between transferor and
5 transferee as to transferee’s ownership); Eden Toys, Inc. v. Florelee Undergarment
6 Co., 697 F.2d 27, 36 (2d Cir. 1982)(“In this case, in which the copyright holder
7 appears to have no dispute with its licensee on this matter, it would be anomalous to
8 permit a third party infringer to invoke this provision against the
9 licensee”)(affirming oral license confirmed in later writing).
Here, there is no dispute between Plaintiff and Mr. Munaf as to Plaintiff’s

10

11 ownership of the Munaf Video. (GD, Fact 1; Rosenberg Decl, ¶¶ 1-4; Munaf Decl,
12 ¶¶ 1-7, Exh. A). It would be contrary to the purposes of the writing requirement of
13 the Copyright Act to allow Plaintiff, a third party infringer, to challenge the
14 adequacy of the writing memorializing Plaintiff’s undisputed ownership. See id.
15 B.

At a Minimum, Plaintiff Owns the Munaf Video As an Assignee of

16

Mr. Munaf’s Rights Under Their Oral and Non-Disclosure Agreements

17
18

A transfer of copyright ownership, other than by operation of law, is
not valid unless an instrument of conveyance, or a note or
memorandum of the transfer, is in writing and signed by the owner
of the rights conveyed or such owner’s duly authorized agent.

19
20 17 U.S.C. § 204(a).
21
22

No magic words must be included in a document to satisfy § 204(a).
Rather, the parties’ intent as evidenced by the writing must
demonstrate a transfer of the copyright.

23 Radio Television Espanola, S.A. v. New World Enter., Inc., 183 F.3d 922, 927 (9th
24 Cir. 1999).
25
26
27

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.

28
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1 Effects Associates, Inc. v. Cohen, 908 F.2d 555, 557 (9th Cir. 1990).
2

Here, even if the Court finds that the Munaf Video is not a work-for-hire, at a

3 minimum, the parties’ oral agreement on September 8, 2015, as memorialized in the
4 December 7, 2015, Non-Disclosure Agreement assigned any copyright of
5 Mr. Munaf in the Munaf Video to Plaintiff. Plaintiff and Mr. Munaf agreed on
6 September 8, 2015, that Plaintiff would own all rights, including all copyrights, in
7 the footage shot that evening by Mr. Munaf. (GD, Fact 1.) The Non-Disclosure
8 Agreement later executed by Mr. Munaf on December 7, 2015, provides:
9
10
11
12

You [Mr. Munaf] acknowledge and agree that this Agreement does
not grant you any license in or any ownership or rights in or to any
of the Proprietary Materials or any portions thereof or the rights to
use, exploit, transfer, share, transmit, broadcast or retain the
Proprietary Materials in any manner, medium or form. 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-for-hire, worldwide in perpetuity.

13
14 (Miller Decl, Exh. A, p. 1 (emphasis added); SF, Fact 28.)
15

This language clearly reflects the parties’ mutual intent, as previously agreed

16 in their oral agreement on September 8, 2015 (GD, Fact 1), that Plaintiff owned all
17 rights, including the copyrights, in the Munaf Video. The Non-Disclosure
18 Agreement is effective as a written memorandum of the prior oral transfer of the
19 copyright to Plaintiff even assuming arguendo that the Court finds that the Munaf
20 video is not a work for hire. Valente-Kritzer, 881 F.2d at 775 (“If an oral transfer of
21 a copyright license is later confirmed in writing, the transfer is valid”); Magnuson,
22 85 F.3d at 1428 (“under some circumstances a prior oral grant that is confirmed by a
23 later writing becomes valid as of the time of the oral grant, even if the writing is
24 subsequent to the initiation of litigation on the copyright infringement”); Eden Toys,
25 697 F.2d at 36 (oral transfer subsequently confirmed in a writing complied with the
26 writing requirement in the Copyright Act); Stewart Title of California, Inc. v.
27 Fidelity Nat. Title Co., 279 Fed.Appx. 473, 475 (9th Cir. 2008) (“[t]his requirement
28 [of a signed writing memorializing a transfer of copyright] can be satisfied by an
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1 oral agreement later confirmed in a writing”)6; but see Konigsberg Intern. Inc. v.
2 Rice, 16 F.3d 355, 357 (9th Cir. 1994)(questioning “whether a later writing can
3 validate a purported transfer that substantially predates the writing,” and reading the
4 rule to apply “only to writings executed during the life of the purported license—
5 not, as here, many years later”)(emphasis added).
Plaintiff at all times owned the copyright in the Munaf Video. Mr. Munaf

6

7 transferred any rights he had in the Munaf Video to Plaintiff on September 8, 2015,
8 and hence Mr. Munaf had no rights to grant or license to TMZ in December 2015.
9 C.

The December 4 Email Exchange Did Not Give Defendants an Express or

10

Implied License to Publish the Munaf Video

11

Defendants assert as separate affirmative defenses that they allegedly had an

12 express or implied license from Mr. Munaf to publish the Taylor Swift Excerpt.
13 (First Amended Answer [Doc 21], 7-8, Second and Third Defenses.) Defendants
14 bear the burden of proof on these two defenses. Ford Motor Co. v. Titan Enter. Inc.,
15 2015 WL 9272814, at *5. Both defenses turn on the December 4, 2015, email
16 exchange between Naeem Munaf and TMZ (“December 4 Email Exchange”). (See
17 SF, Facts 12-14; Olasa Decl, ¶¶ 1-2, Exhs. 1-2 [December 4 Email Exchange].) As
18 discussed above, because Mr. Munaf never had any copyrights in the Munaf Video,
19 any alleged license or transfer to TMZ on December 4, 2015, was of no force or
20 effect—Mr. Munaf was not the copyright owner. But even if he had owned the
21 copyright on December 4, 2015, the December 4 Email Exchange was still
22 ineffective to grant either an express or implied license to TMZ.
23 / / /
24 / / /
25 / / /
26

6

Unpublished decisions issued after January 1, 2007, may be cited as persuasive
27 authority under Ninth Circuit Rule 36-3(b). United States v. Dorsey, 2015 WL
28 847395 at *3 n. 4 (C.D. Cal. Feb. 23, 2015)(J. Snyder).
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1

1.

The Email Exchange Does Not Purport to Transfer Copyright or

2 Grant Any Copyright License to TMZ—It Concerns Sale of a Material Object
3
4
5

Ownership of a copyright, or of any of the exclusive rights under a
copyright, is distinct from ownership of any material object in which
the work is embodied. Transfer of ownership of any material object,
including the copy or phonorecord in which the work is first fixed,
does not of itself convey any rights in the copyrighted work
embodied in the object.

6
7 17 U.S.C. § 202.
8

Here, the December 4 Email Exchange (Olasa Decl, ¶¶ 1-2) does not mention

9 copyright or a license of copyright—on its face, it purports to sell to TMZ the
10 material object (video) that contains the Taylor Swift Excerpt. Ms. Hendry’s email
11 to Mr. Munaf states: “TMZ will pay you $2,000.00 USD for the outright purchase
12 of 1 video of Jared Leto talking about Taylor Swift.” (SF, Fact 12)(emphasis
13 added). The letter contract attached to Ms. Hendry’s email states, in part: “EHM
14 Productions, Inc. d/b/a TMZ (“TMZ”) offers to purchase outright from you 1 video
15 of Jared Leto talking about Taylor Swift (the “Material”) for the total amount of
16 $2,000.00 USD.” (SF, Facts 12-13; Olasa Decl, ¶ 1, Exh, 1)(emphasis added).
17

The December 4 Email Exchange reflects an intent to sell “1 video” to TMZ.

18 There is no reference to any copyright or license in the content, nor does Mr. Munaf
19 represent in the December 4 Email Exchange that he owns any copyright in the “1
20 video” he agreed to sell “outright.” The December 4 Email Exchange reflects
21 Mr. Munaf selling a video to TMZ, intending TMZ to publish it, but without
22 Mr. Munaf claiming to own or to transfer to TMZ any copyright. The December 4
23 Email Exchange is a contract for the sale of a physical object, i.e., “1 video,” but not
24 any copyrights in its content. 17 U.S.C. § 202.
25

While an agreement to transfer a copyright need not be the “Magna Charta,”

26 Effects Associates, 908 F.2d at 557, it still must reflect an intent to transfer the
27 copyright. Id.; Radio Television Espanola, 183 F.3d at 927. “[T]he intention of a
28 copyright owner seeking to transfer an ownership interest must be clear and
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1 unequivocal.” Weinstein Co. v. Smokewood Entm't Grp., LLC, 664 F. Supp. 2d 332,
2 341 (S.D.N.Y. 2009).
3

Here, the December 4 Email Exchange not only does not mention any transfer

4 of copyright or evidence any intent to transfer or license any copyright interest, it
5 implies on its face as drafted by TMZ that Mr. Munaf retains any such rights:
You [Mr. Munaf] further acknowledge that … you will not use,
exhibit or grant any rights in the Material to any third party without
TMZ’s prior written consent.

6
7

8 (SF, Facts 12-13; Olasa Decl [Doc. 48], ¶ 1, Exh, 1.) This language is inconsistent
9 with TMZ acquiring any copyright in the Taylor Swift Excerpt from Mr. Munaf. If,
10 as Defendants contend, Mr. Munaf intended to transfer to TMZ “outright” the
11 copyright in the Taylor Swift Excerpt, then by definition he would have had no
12 rights to later “grant” to “any third party,” whether with or “without TMZ’s prior
13 written consent.” Id. TMZ did not acquire any copyright interest from Mr. Munaf.
14

Likewise, \ the December 4 Email Exchange does not evidence any intent to

15 grant a license to TMZ, nor is the word “license” even used. To the contrary, the
16 attachment to Ms. Hendry’s email states that TMZ shall be the “exclusive owner of
17 the Material to use in all media … .” (Doc. 48, 6.). The only plausible
18 interpretation of the December 4 Email Exchange is it concerns the “outright” sale
19 of a material object (“1 video”).
20

Even assuming arguendo that Mr. Munaf owned the copyright in the Taylor

21 Swift Excerpt as of December 4, 2015 (which Plaintiff denies, as explained above),
22 the December 4 Email Exchange still did not (1) transfer any copyright to TMZ or
23 (2) grant any license to TMZ. At a minimum, there is a material factual dispute
24 whether the December 4 Email Exchange either transferred a copyright or granted a
25 license to use the Taylor Swift Excerpt even if Mr. Munaf owned the copyright.
26

2.

27

Section 204 of the Copyright Act provides that any transfer of a copyright

The Email Exchange Is Not Signed by Mr. Munaf

28 must be memorialized in a writing signed by the transferor:
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A transfer of copyright ownership, other than by operation of law, is
not valid unless an instrument of conveyance, or a note or
memorandum of the transfer, is in writing and signed by the owner
of the rights conveyed or such owner’s duly authorized agent.

1
2
3

4 17 U.S.C. § 204(a).
The December 4 Email Exchange is unsigned. Ms. Hendry’s email attaches a

5

6 letter contract and asks Mr. Munaf to sign it (Olasa Decl, Exh. 1), but Mr. Munaf
7 never returned a signed copy of the contract. (SF, Facts 12-13, 26.) There is no
8 “note or memorandum of transfer … signed by the owner.” 17 U.S.C. § 204(a).
Defendants argue that Mr. Munaf’s December 4, 2015, email (Olasa Decl,

9

10 Exh. 2) satisfies the “signed by the owner” requirement under the Act. Defendants
11 cite to the Electronic Signatures in Global and National Commerce Act (“E-Sign
12 Act”), 17 U.S.C. § 7001 et seq., but the E-Sign Act merely provides that “a
13 signature, contract, or other record relating to such transaction may not be denied
14 legal effect, validity, or enforceability solely because it is in electronic form,” and
15 that “a contract relating to such transaction may not be denied legal effect, validity,
16 or enforceability solely because an electronic signature or electronic record was
17 used in its formation.” 17 U.S.C. § 7001(a)(1)-(2).
Furthermore, the E-Sign Act distinguishes between a “record” and a

18

19 “signature.” The definitions in Section 7006 of the E-Sign Act provide:
20

(4) Electronic record

21
22

The term “electronic record” means a contract or other record
created, generated, sent, communicated, received, or stored by
electronic means.

23

(5) Electronic signature

24

The term “electronic signature” means 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 the intent to sign
the record.

25
26

27 17 U.S.C. § 7001(4)-(5).
28 / / /
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1

Here, the December 4 Email Exchange arguably is an electronic record, but it

2 has no “electronic signature.” See id. There is no “electronic sound, symbol, or
3 process, attached to or logically associated with a contract or other record and
4 executed or adopted by a person with the intent to sign the record,” 17 U.S.C.
5 § 7001(5), anywhere in Mr. Munaf’s December 4, 2015, email (Olasa Decl [Doc.
6 48], Exh. 2.)
7

Defendants cite three out-of-circuit cases in support of their argument that an

8 exchange of emails alone—without an “electronic signature”—constitutes a signed
9 writing as required under the Copyright Act. Metropolitan Regional Information
10 Systems, Inc. v. American Home Realty Network, Inc., 729 F.3d 591 (4th Cir. 2013)
11 involved an online “Terms of Use Agreement” for online real estate services that
12 required users to click “yes” prior to uploading copyrighted photographs. The court
13 affirmed the trial court’s grant of a preliminary injunction, holding that “an
14 electronic agreement may effect a valid transfer of copyright interest under Section
15 204 of the Copyright Act.” Id. at 602-603. Clicking a button on a website, as in
16 Metropolitan, arguably constitutes an “electronic sound, symbol, or process” under
17 17 U.S.C. § 7001(5). Here, however, there was no analogous button to click on to
18 agree to the terms of an online agreement—it was a simple exchange of emails.
19

In Dish Network, L.L.C. v. TV Net Solutions, LLC, 2014 WL 6685366 (M.D.

20 Florida Oct. 10, 2014), the original agreement transferring copyright contained a
21 physical, handwritten signature, and the court found “the fact that the extension of
22 the agreement … was completed by email does not render the assignment of the
23 associated copyrights ineffective under § 204.” Id. at *8 fn. 16 (citing Metropolitan,
24 supra). Here, there is no underlying agreement to transfer copyright that contains a
25 physical signature, which the emails extend—the emails are the only record. See id.
26

In Vergara Hermosilla v. Coca-Cola Co., 2011 WL 744098 (S.D. Florida

27 Feb. 23, 2011), the Southern District of Florida held that an exchange of emails
28 constituted a binding agreement to assign the rights in lyrics. Id. at *3. The court
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1 did not analyze the applicability of the E-Sign Act and merely noted without
2 discussion that “[c]ourts have found emails to constitute signed writings.” Id.
3 (citing Laemle v. Matterl, Inc., 394 F.3d 1355 (Fed. Cir. 2005)). The court did not
4 address whether the emails satisfied the “signed by the owner” requirement of 17
5 U.S.C. § 204(a) and instead analyzed only whether the parties had reached a binding
6 agreement. Id. at **3-4. Parties may enter into a contract without signing any
7 paper, but Section 204(a) requires that an agreement to transfer copyright must be
8 “signed by the owner of the rights conveyed.” 17 U.S.C. § 204(a). Vergara failed
9 to address the Section 204(a) issue and thus is not persuasive authority here. By
10 contrast, reported cases in the Ninth Circuit have found electronic signatures valid
11 under the E-Sign Act where there was a button to click or other similar digital
12 equivalent of an actual signature. See, e.g., Klein v. Delbert Servs. Corp., 2015 WL
13 1503427, at *5 (N.D. Cal. Apr. 1, 2015) (digital checkmarks in online loan
14 application process were sufficient to establish acceptance of arbitration agreement);
15 Newton v. Am. Debt Servs., Inc., 854 F. Supp. 2d 712, 731 (N.D. Cal. 2012), aff’d,
16 549 F. App’x 692 (9th Cir. 2013)(holding that the plaintiff assented to the contract
17 where it was signed using DocuSign, which required the plaintiff to create a
18 signature and then click a button saying “Confirm Signing”).
19

3.

20

Implied non-exclusive licenses of copyright “are generally ‘found only in

The Email Exchange Did Not Create an Implied License

21 narrow circumstances where one party created a work at the other’s request and
22 handed it over, intending that the other copy and distribute it.’” Bangkok
23 Broadcasting & T.V. Co., Ltd., v. IPTV Corp., 742 F.Supp.2d 1101, 1112 (C.D. Cal.
24 2010)(citing cases, and noting that courts find implied non-exclusive licenses in
25 only limited circumstances following the test set forth in Effects Associates);
26 Corbello v. DeVito, 777 F.3d 1058, 1067 (9th Cir. 2015)(“the Ninth Circuit ‘ha[s]
27 held that an implied license is granted when (1) a person (the licensee) requests the
28 creation of a work, (2) the creator (the licensor) makes that particular work and
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1 delivers it to the licensee who requested it, and (3) the licensor intends that the
2 licensee-requestor copy and distribute the work’” )(quoting Asset Marketing Sys.,
3 Inc. v. Gagnon, 542 F.3d 748, 754-55 (9th Cir. 2008).)
4

In Effects Associates, a movie mogul hired a special effects company to create

5 special effects footage for a horror film but neglected to obtain a written license.
6 The effects company sued for infringement. The Ninth Circuit affirmed the district
7 court’s grant of summary judgment for the defendant, holding that, under the
8 circumstances, the effects company had granted the defendant an implied non9 exclusive license for use of the footage in the film given that the effects company
10 had (a) created the footage at the defendant’s request and (b) had “handed it over,
11 intending that defendant copy and distribute it.” Id., 908 F.2d at 558.
12
13
14
15
16

The sale of a material object does not necessarily imply any copyright license.
While we may consider delivery of a copyrighted object as “a
relevant factor” to determine the existence of an implied license, …,
the copyright statute forbids courts from inferring a transfer of
copyright or a license from mere delivery of the material object in
which the work is embodied. 17 U.S.C. § 202. Rather, courts should
focus primarily on “the licensor's objective intent at the time of the
creation and delivery of the software as manifested by the parties'
conduct.”

17
18 Corbello, 777 F.3d at 1067 (quoting Gagnon, 542 F.3d at 755 n. 4, 756).
19

Here, the facts do not support an implied license. Plaintiff retained

20 Mr. Munaf to shoot the Munaf Video—not Defendants. These are not the “narrow
21 circumstances where one party created a work at the other’s request and handed it
22 over, intending that the other copy and distribute it,” Bangkok Broadcasting, 742
23 F.Supp.2d at 1112. Rather, TMZ obtained an unauthorized copy of the Munaf
24 Video from Mr. Munaf after its creation. There is no basis to imply a license. See
25 id. This is doubly true because Mr. Munaf was never the copyright owner, and
26 hence his decision to sell the footage could not “imply” a license he could not grant.
27 The suspicious and covert circumstances under which TMZ obtained through an
28 unsolicited email from an unknown “Jake Miller” (which TMZ learned in this
KING, HOLMES,
PATERNO &
SORIANO, LLP

3483.062/1051140.1

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 Case 2:15-cv-09512-RSWL-PJW Document 60 Filed 07/26/16 Page 25 of 26 Page ID #:409

1 litigation was a false name) video footage shot at the home of a famous celebrity,
2 Jared Leto, and which TMZ clearly believed displayed Mr. Leto in a negative light,

3 coupled with the email and contract drafted by TMZ that offer to purchase " 1
4 video," strongly evidence that TMZ knew it was not acquiring any copyright

5 interest, including that "Jake Miller" likely did not own the copyright interest and
6 may have stolen the footage. There are no circumstances here that comport with the

7 narrow circumstances in which courts have found an implied license. See id. At a
8 minimum, there is a triable issue of fact regarding whether the circumstances here
9 give rise to an implied non-exclusive license. See Montwillo v. Twill, 632 F. Supp.

10 2d 917, 924 (N.D. Cal. 2008)(denying summary judgment on the issue of implied

11 non-exclusive license, and finding "there are numerous issues of fact regarding the
12 parties' conduct and whether plaintiff intended to grant a nonexclusive license").
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IV.

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CONCLUSION

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For the foregoing reasons, the Court should deny the Motion in its entirety

16 and should grant such other and further relief as the Court deems just and proper.
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18 DATED: July 26, 2016
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KING, HOLMES, PATERNO &
SORIANO, LLP

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HOWARD E . KING
S ETH MILLER

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Attorneys for Plaintiff SISYPHUS TOURJNG,
INC.

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CERTIFICATE OF SERVICE

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I hereby certify that on July 26, 2016, I electronically filed the foregoing

3 PLAINTIFF'S OPPOSITION TO DEFENDANTS' MOTION FOR
4 SUMMARY JUDGMENT; DECLARATIONS OF JARED ROSENBERG
5 AND SETH MILLER with the Clerk of the Court by using the CM/ECF system. I
6 certify that all participants in the case are registered CM/ECF users and that service
7 will be accomplished by the CM/ECF system.

~ ~-X Jrwoi±

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