Case 3:16-cv-01442-SRU Document 23-1 Filed 10/17/16 Page 1 of 34

UNITED STATES DISTRICT COURT
DISTRICT OF CONNECTICUT

Horror Inc. and The Manny
Company,

Case No.: No. 3:16-cv-01442-SRU

Plaintiffs,
vs.
Victor Miller & Does 1 through 10,
Defendants.

October 17, 2016

MEMORANDUM OF POINTS AND AUTHORITIES
IN SUPPORT OF DEFENDANT’S MOTION TO DISMISS

Marc Toberoff (Federal Bar No. phv08515)
mtoberoff@toberoffandassociates.com
TOBEROFF & ASSOCIATES, P.C.
23823 Malibu Rd, Ste 50-363
Malibu, California, 90265
Telephone:(310) 246-3333
Fax: (310) 246-3101
Attorneys for Defendant Victor Miller

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TABLE OF CONTENTS
INTRODUCTION ...................................................................................................................... 1
PROCEDURAL AND FACTUAL BACKGROUND................................................................ 2
ARGUMENT .............................................................................................................................. 4
I.

LEGAL STANDARD ...................................................................................................... 4

II.

COUNT I FAILS TO STATE A CLAIM ....................................................................... 5
A.

The Complaint Does Not, And Cannot, Allege That Miller Expressly
Agreed In A Written Instrument That His Screenplay Would Be A Work
Made For Hire As Required by 17 U.S.C. § 101(2) .......................................... 5

B.

The Complaint Alleges Insufficient Facts to Establish that Defendant Was
Manny’s “Employee” Governed by Section 101(1) .......................................... 6
1.

C.

Plaintiffs Fail to Allege Most CCNV Factors ......................................... 8
i.

Plaintiff Did Not Withhold Taxes or Pay Social Security .......... 8

ii.

Plaintiff Paid Miller for Completion of a Distinct Task ............. 9

iii.

Writing Screenplays Is a Skilled Occupation ............................. 9

iv.

Miller Provided His Own Tools ................................................ 10

v.

Plaintiff Does Not Allege Defendants Worked on Its
Premises .................................................................................... 10

vi.

Miller Was Only Hired for One Task ....................................... 11

vii.

Plaintiffs Do Not and Cannot Allege They Had the Right to
Assign Miller Additional Tasks ................................................ 11

viii.

Plaintiffs Do Not Allege any Discretion Over When and How
Long Miller Worked ................................................................. 11

ix.

Plaintiffs Do Not Allege That Miller Had No Discretion in
Hiring Assistants ....................................................................... 12

Plaintiff’s Fail to Allege that Anyone Other Than Miller Wrote the
Screenplay ......................................................................................................... 13

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III.

IV.

PLAINTIFFS’ STATE-LAW COUNTS ARE PREEMPTED ..................................... 14
A.

Count II for Breach of Contract is Preempted .................................................. 17

B.

Count II for Slander of Title is Preempted........................................................ 21

C.

Count IV for Unfair Competition is Preempted ................................................ 21

PLAINTIFFS’ STATE-LAW COUNTS FAIL FOR ADDITIONALREASONS ....... 23

CONCLUSION ......................................................................................................................... 25

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TABLE OF AUTHORITIES
Cases
Am. Movie Classics Co. v. Turner Entm't Co.
922 F. Supp. 926, 931 (S.D.N.Y. 1996).................................................................................... 19
Arawana Mills Co. v. United Techs. Corp.,
795 F. Supp. 1238 (D. Conn. 1992) .......................................................................................... 25
Arpaia v. Anheuser-Busch Companies, Inc.,
55 F. Supp. 2d 151, 162 (W.D.N.Y. 1999) ............................................................................... 19
Ashcroft v. Iqbal,
129 S.Ct. 1937 (2009) ........................................................................................................ passim
Aymes v. Bonelli,
980 F.2d 857 (2d Cir. 1992)............................................................................................... passim
Blue Nile, Inc. v. Ice.com, Inc.,
478 F. Supp. 2d 1240, 1250 (W.D. Wash. 2007) ...................................................................... 21
Boulevard Associates v. Sovereign Hotels, Inc.,
72 F.3d 1029, 1038-39 (2d Cir.1995) ....................................................................................... 25
Brandewiede v. Emery Worldwide,
890 F. Supp. 79 (D. Conn. 1994) .............................................................................................. 24
Carter v. Helmsley-Spear Inc.,
71 F.3d 77 (2nd Cir. 1995).......................................................................................................... 8
Carter v. Helmsley-Spear, Inc.,
958 F.2d 896 (9th Cir. 1992) ...................................................................................................... 9
Christians of California, Inc. v. Clive Christian New York, LLP,
13-CV-275 KBF, 2014 WL 4743422, (S.D.N.Y. Sept. 15, 2014) ........................................... 11
Classic Media v. Mewborn
532 F.3d 978 (9th Cir. 2008) ...................................................................................................... 1
Community for Creative Non-Violence v. Reid,
490 U.S. 730 (1989) ........................................................................................................... passim
Computer Assocs. Int'l v. Altai, Inc.,
93 Cal. App. 4th 993 (2001) ..................................................................................................... 16
Computer Horizons Corp. v. Factorum, Inc.,
No. CV 980584758S, 1999 WL 1126311, (Conn. Super. Ct. Nov. 1 2001) ............................ 25

iii

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Cortec Indus., Inc. v. Sum Holding L.P.,
949 F.2d 42 (2d Cir. 1991).......................................................................................................... 4
Cramer v. Crestar Fin. Corp.,
67 F.3d 294 (4th Cir. 1995) ...................................................................................................... 20
DeCarlo v. Archie Comic Publications, Inc.,
127 F. Supp. 2d 497 (S.D.N.Y. 2001)....................................................................................... 20
Del Madera Properties v. Rhodes and Gardner, Inc.,
820 F.32d 973, 976 (9th Cir. 1987) ..................................................................................... 16, 22
Endemol Entm't v. Twentieth Television Inc.,
48 U.S.P.Q.2d 1524 (C.D.Cal. 1998)........................................................................................ 18
Graham v. James,
144 F.2d 229 (2nd Cir. 1998)................................................................................................ 9, 10
G.S. Rasmussen & Associates, Inc. v. Kalitta Flying Serv., Inc.,
958 F.2d 896 (9th Cir. 1992) .................................................................................................... 15
Harper & Row Publishers Inc. v. National Enterprises,
723 F. 2d 195 (2nd Cir. 1983)............................................................................................. 13, 15
Idema v. Dreamworks, Inc.,
162 F. Supp. 2d 1129 (C.D. Cal. 2001) ................................................................................... 16
In re Brown,
743 F.2d 664 (9th Cir. 1984) ...................................................................................................... 9
Keller v. Niskayuna Consol. Fire Dist. 1,
51 F. Supp. 2d 223 (N.D.N.Y. 1999) ........................................................................................ 10
Kregos v. Associated Press,
3 F.3d 656 (2d Cir. 1993)................................................................................................... 16, 22
Larry Spier, Inc. v. Bourne Company,
953 F.2d 774 (2d Cir. 1992)........................................................................................................ 7
Marco v. Accent Pub. Co.,
969 F.2d 1547 (3d Cir. 1992)...................................................................................................... 9
Maxient, LLC v. Symplicity Corp.,
63 F. Supp. 3d 592 (E.D. Va. 2014) ......................................................................................... 21
Mayer v. Josiah Wedgwood & Sons, Ltd.,
601 F. Supp. 1523, 1535 (S.D.N.Y. 1985)................................................................................ 21
MEECO Mfg. Co. v. True Value Co.,
2007 U.S. Dist. LEXIS 25986 (W.D. Wash. Apr. 3, 2007) ...................................................... 21
iv

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Morales v. Trans World Airlines, Inc.,
504 U.S. 374 (1992) .................................................................................................................. 14
Motown Record Corp. v. George A. Hormel & Co,
657 F. Supp. 1236, 1239 (C.D. Cal. 1987) ............................................................................... 21
National Car Rental Sys., Inc. v. Computer Assocs. Int’l Inc.,
991 F.2d 426 (8th Cir. 1993) ............................................................................................... 18, 20
Netzer v. Continuity Graphic Associates, Inc.,
963 F. Supp. 1308 (S.D.N.Y. 1997).......................................................................................... 15
Pergament v. Green,
32 Conn.App. 644 (1993) ........................................................................................................ 24
Quimby v. Kimberly Clark Corp.,
28 Conn. App. 660 (1992) ........................................................................................................ 24
Ray Charles Foundation v. Robinson,
919 F.Supp.2d 1054 (C.D. Cal. 2013) ...................................................................................... 23
Ritchie v. Williams,
395 F.3d 283 (6th Cir. 2005) .................................................................................................... 15
Selby v. New Line Cinema Corp.,
96 F. Supp. 2d 1053 (C.D. Cal. 2000) ...................................................................................... 19
SHL Imaging, Inc. v. Artisan House, Inc.,
117 F. Supp. 2d 301 (S.D.N.Y. 2000)....................................................................................... 11
Stewart v. Abend,
495 U.S. 207 (1990) .................................................................................................................... 1
Talbert v. Am. Risk Ins. Co.,
405 F. App'x 848 (5th Cir. 2010) .............................................................................................. 11
Thibault v. Bellsouth Telecomm., Inc.,
612 F.3d 843 (5th Cir.2010) ..................................................................................................... 11
Trenton v. Infinity Broad. Corp.,
865 F. Supp. 1416 (C.D. Cal. 1994) ................................................................................... 17, 21
Twentieth Century Fox Film Corp. v. Marvel Enterprises, Inc.,
277 F.3d 253 (2d Cir. 2002)............................................................................................ 6, 18, 22
U.S. Ex Rel. Berge v. Board of Trustees of Univ. of Ala.,
104 F.3d 1453 (4th Cir.) ........................................................................................................... 16

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Warner Bros., Inc. v. American Broadcasting Co's,
720 F.2d 231 (2d Cir. 1983)...................................................................................................... 22
Web Press Services Corporation v. New London Motors, Inc.,
203 Conn. 342 (1987) ............................................................................................................... 24
Wells Fargo Bank, N.A., Tr. v. Konover,
322 Conn No. 3:05CV01924(CFD)(WIG, 2010 WL 814894
(D. Conn. Mar. 5, 2010 ) ............................................................................................................. 6
Wolff v. Inst. of Elec. & Elecs. Engineers, Inc.,
768 F. Supp. 66 (S.D.N.Y. 1991) ............................................................................................. 19
Worth v. Universal Pictures, Inc.,
5 F.Supp.2d 816 (C.D.Cal. 1997) ............................................................................................. 19
Wrench LLC v. Taco Bell Corp.,
256 F.3d 446, 457 (6th Cir. 2001) ............................................................................................ 18
16 Casa Duse, LLC v. Merkin,
791 F.3d 247 (2d Cir. 2015)...................................................................................................... 10
Statutes
Cal. Civ. Proc. Code § 425.16 (c) .................................................................................... passim
Cal. Civ. Proc. Code § 425.16 (e) .................................................................................... passim
Connecticut General Statutes § 42-110a ..................................................................................24
Connecticut General Statutes § 42-110b..................................................................................24
17 U.S.C. § 101 ................................................................................................................ passim
17 U.S.C. § 102 ................................................................................................................ passim
17 U.S.C. § 304(c) ........................................................................................................... passim
17 U.S.C. § 203(a) ........................................................................................................... passim
17 U.S.C. § 301 ................................................................................................................ passim
Other Authority
H.R. Rep. No. 94-1476 at 140 (1990),
reprinted in 1976 U.S.C.C.A.N. at 5756 ............................................................................ 16, 17
1 M. Nimmer & D. Nimmer, Nimmer on Copyright (“Nimmer”) § 1.01 .......................... passim
3 M. Nimmer & D. Nimmer, Nimmer On Copyright, §9.02 ............................................ passim
3 Am.Jur.2d Agency § 19 (2002) ............................................................................................... 8
vi

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INTRODUCTION
The Copyright Act’s “termination” provisions preempt ordinary contract principles and
empower authors and designated heirs after lengthy periods of time to statutorily terminate old
copyright transfers without cause. This statutory termination right was enacted by Congress in
recognition of the “unequal bargaining position of authors” and to enable them to secure “the
monetary rewards of a work that may have been initially undervalued, but which later becomes a
commercial success.” Classic Media, Inc. v. Mewborn, 532 F.3d 978, 983-84 (9th Cir. 2008),
citing Stewart v. Abend, 495 U.S. 207, 218-219 (1990) and Mills Music, Inc. v. Snyder, 469 U.S.
153, 172-173 (1985).
Victor Miller (“Miller”) is a freelance author and screenwriter. In 1979 his best friend
Sean S. Cunningham (“Cunningham”), an independent film producer and aspiring director
suggested that they work together on a film emulating the low-budget slasher hit Halloween
(1980). The result was the independent horror film Friday the 13th (1980)(the “Film”). Miller
wrote the screenplay and received sole writing credit on the Film for which he was paid $9,282.
The movie was a major success, spawning eleven sequels, a television series, a videogame and
ubiquitous merchandising.
In 2016 Miller availed himself of his inalienable right under the United States Copyright
Act to recover the U.S. copyright to his original literary material by serving Cunningham’s
successors with statutory notices of termination, effective in 2018, and filing these with the
Copyright Office, so that, as intended by Congress, Miller might finally participate in some of
the fruits of his successful creative labors.
Under the Copyright Act a notice of termination does not prevent, impair or apply to the
exploitation of prior derivative works, including the Film and its sequels, but solely relates to

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new derivative works after the effective termination date. 17 U.S.C. § 203(b)(1). Furthermore,
as the U.S. Copyright Act has no extra-territorial application, the foreign rights to Miller’s
screenplay remain with his original grantee or its successors. Update Art, Inc. v. Modiin Pub.,
Ltd., 843 F.2d 67, 72 (2d Cir.1988). Accordingly, Miller’s statutory termination does not prevent
the exploitation of Friday the 13th which Miller authored, it simply allows him, at long last, to
participate in some of the financial rewards as Congress intended.
PROCEDURAL AND FACTUAL BACKGROUND
On August 24, 2016, Plaintiffs Horror Inc. (“Horror”) and The Manny Company
(“Manny”) filed their complaint against Miller. See Dkt. 1 (“Complaint”).
The Complaint makes the following pertinent allegations: In 1979, Sean Cunningham
wanted to capitalize on the success of the film Halloween and hired Miller, through his entity
The Manny Company (“Manny”) to develop ideas with him for a new horror film and write the
screenplay (the “Screenplay”) for the film. Complaint, ¶ 2. Manny is a Connecticut limited
partnership of which Sean S. Cunningham Films, Inc. is the general partner. Complaint, ¶ 10. On
or about June 4, 1979, Miller signed an agreement (“Agreement”) with The Manny Company to
write the Screenplay for a lump sum payment. Complaint, ¶¶ 2, 17, Ex. 1. In the Agreement
Miller stated in that he was a member of the Writer’s Guild of America (“WGA”), and Plaintiffs
are informed and believe that Miller collected WGA pension, health and welfare benefits.
Complaint, ¶ 18. Cunningham and Miller met to discuss ideas for the Screenplay “several times a
week,” and Cunningham would ask Miller to incorporate certain ideas in the Screenplay.
Complaint, ¶ 19. Cunningham exercised control and authority over elements of the Screenplay.
Complaint, ¶ 21.

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Georgetown Productions Inc. (“Georgetown”) offered to finance the film for $500,000
dollars if it received complete control over the Friday the 13th film (the “Film”) and the
Screenplay, and Cunningham agreed. Complaint, ¶ 22. Pre-production of the Film began in midAugust 1979 and principal photography commenced in or about October 1979. Complaint, ¶ 23.
Phil Scuderi on behalf of Georgetown provided notes and ideas which were incorporated into the
final shooting script and Film. Id.
On May 7, 1980, Manny sold all rights in the Friday the 13th Screenplay to Georgetown,
representing that Miller was the “author” of the Screenplay for the Manny Company. Complaint,
¶ 24. On September 4, 1980, long after the Film had been written, shot, and released,
Georgetown filed an application for copyright registration of the Film at the U.S. Copyright
Office in which Georgetown claimed authorship of the Film. Complaint, ¶ 26, Ex. 2. Horror Inc.
(“Horror”) is Georgetown’s successor-in-interest and currently holds all rights to the Film and
Screenplay. Complaint, ¶ 27. On January 26, 2016, Miller served a notice of termination under
Section 203(a) of the Copyright Act directed to Manny and Horror’s licensees, with an effective
termination date of January 25, 2018. Complaint, ¶ 28. On June 27, 2016, Miller served an
amended notice of termination, with an effective termination date of July 1, 2018, revised to
include Horror as a recipient. Complaint, ¶ 28. On July 14, 2016 Miller reissued the notice of
termination with an effective date of July 15, 2018, modifying some recipient’s
addresses. Complaint, ¶ 28. Miller’s termination notices are collectively referred to as the
“Termination Notices.” Id. Horror and Manny dispute the validity of the Termination Notices.
Complaint, ¶¶ 30-31.
The Complaint contains four counts, a federal count for declaratory relief under the
Copyright Act that Miller’s Termination Notices are invalid, and three state-law counts for

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breach of contract, slander of title and violation of the Connecticut Unfair Trade Practices Act.
Count I by Horror and Manny: The First Count (Complaint, ¶¶ 32-34) seeks a
declaration that Miller’s Screenplay for Friday the 13th was written as “work for hire” pursuant
to the Agreement and on that basis that the Termination Notices are invalid.
Count II by Manny: The Second Count (Complaint, ¶¶ 35-42) alleges that Miller
breached the Agreement by filing and serving the Termination Notices.
Count III by Horror: The Third Count (Complaint, ¶¶ 43-48) alleges that the Termination
Notices slander Horror’s title to the Screenplay.
Count IV by Horror: The Fourth Count (Complaint, ¶¶ 49-54) alleges that the
Termination Notices constitute unfair competition in violation of the Connecticut Unfair Trade
Practices Act (“CUTPA”).
ARGUMENT
I.

LEGAL STANDARD
Under F.R.C.P. 8(a)(2), a complaint must contain a “plain statement of the claim[s]

showing that the pleader is entitled to relief.” To survive a motion to dismiss under F.R.C.P.
12(b)(6), “a complaint must contain sufficient factual matter … to ‘state a claim to relief that is
plausible on its face.’” Ashcroft v. Iqbal, 129 S.Ct. 1937, 1949 (2009) (citations omitted).
“[W]here the well-pleaded facts do not permit the court to infer more than the mere possibility of
misconduct, the complaint has alleged – but it has not ‘shown’ – ‘that the pleader is entitled to
relief’” and, on that basis, must be dismissed. Id., at 1950 (quoting F.R.C.P. 8(a)(2)). Legal
conclusions “are not entitled to an assumption of truth.” Id.
“The complaint is deemed to include any written instrument attached to it as an exhibit or
any statements or documents incorporated in it by reference” and the court is “entitled to
consider them in deciding the motion to dismiss.” Cortec Indus., Inc. v. Sum Holding L.P., 949
F.2d 42, 47-48 (2d Cir. 1991).

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II.

COUNT I FAILS TO STATE A CLAIM
A.

The Complaint Does Not, And Cannot, Allege That Miller Expressly Agreed
In A Written Instrument That His Screenplay Would Be A Work Made For
Hire As Required By 17 U.S.C.§ 101(2).

“Section 101 of the 1976 Act provides that a work is ‘for hire’ under two sets of
circumstances.” Cmty. for Creative Non-Violence v. Reid (“CCNV”), 490 U.S. 730, 738 (1989),
one of which is when “a work specially ordered or commissioned for use as a contribution to a
collective work, as a part of a motion picture or other audiovisual work, as a translation, as a
supplementary work, as a compilation, as an instructional text, as a test, as answer material for a
test, or as an atlas, if the parties expressly agree in a written instrument signed by them that the
work shall be considered a work made for hire.” 17 U.S.C. § 101(2). Plaintiffs alleges that
Manny engaged Miller to write the Screenplay pursuant to the Agreement attached to the
Complaint and incorporated therein by reference. Complaint, ¶ 17, Ex. 1. While the Screenplay
was clearly commissioned by Manny for use as part of to be part of a motion picture, the Film,
Plaintiff never alleges that a written instrument signed by Manny agreeing the Screenplay shall
be considered a “work made for hire.” And the Agreement attached to the Complaint, and
alleged by Plaintiffs to be Miller’s operative agreement, does not contain any such express
agreement, nor even the phrase “work made for hire” or “work for hire.” Complaint, ¶ 18. “This
agreement does not mention a work-for-hire relationship . . . It does not, therefore, satisfy the
writing requirement of § 101(2) that ‘the parties expressly agree in a written instrument signed
by them that the work shall be considered a work made for hire.’” Playboy Enterprises, Inc. v.
Dumas, 53 F.3d 549, 560 (2d Cir. 1995). Accordingly, the Complaint does not and cannot allege
sufficient facts to satisfy the requirements of 17 U.S.C. 101(2). See CCNV, 490 U.S. at 751-52.

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B.

The Complaint Alleges Insufficient Facts to Establish that Defendant was
Manny’s “Employee” Governed by Section 101(1).

A work can also be a “work for hire” under Section 101(1) of the Copyright Act if it was
created by an “employee in the ordinary course of his employment.” 17 U.S.C. § 101(1). With no
written agreement signed by Miller stating that his Screenplay was a “work made for hire,”
Plaintiffs’ attempt to force a round peg into a square hole, and apparently allege that Miller was
Manny’s “employee” under Section 101(1). In CCNV, 490 U.S. at 739 (1989), the U.S. Supreme
Court held: “in using the term “employee,” the parties and Congress meant to refer to a hired
party in a conventional employment relationship.”
CCNV drew a clear distinction between an “employee” and an independent contractor,
stating that “when Congress has used the term ‘employee’ without defining it, we have
concluded that Congress intended to describe the conventional master-servant relationship as
understood by [the federal] common-law agency doctrine.” Id at 739-740.
CCNV listed thirteen factors which “determin[e] whether a hired party is an employee
under the general common law of agency”: “the hiring party’s right to control the manner and
means by which the product is accomplished”, (2) “the skill required”; (3) “the source of the
instrumentalities and tools”; (4) “the location of the work”; (5) “the duration of the relationship
between the parties”; (6) “whether the hiring party has the right to assign additional projects to
the hired party”; (7) “the extent of the hired party’s discretion over when and how long to work”;
(8) “the method of payment”; (9) “the hired party’s role in hiring and paying assistants”; (10)
“whether the work is part of the regular business of the hiring party”; (11) “whether the hiring
party is in business”; (12) “the provision of employee benefits”; and (13) “the tax treatment of
the hired party.” Id. at 751-52.
The Second Circuit has held that the following five “factors will almost always be

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relevant and should be given more weight in the analysis, because they will usually be highly
probative of the true nature of the employment relationship”: “(1) the hiring party’s right to
control the manner and means of creation; (2) the skill required; (3) the provision of employee
benefits; (4) the tax treatment of the hired party; and (5) whether the hiring party has the right to
assign additional projects to the hired party.” Aymes v. Bonelli, 980 F.2d 857, 861(2d Cir. 1992).
Of the CCNV factors, Plaintiffs solely attempt to allege three factors, that Manny had the
right to control the manner by which the Screenplay was written (Complaint, ¶ 21); that the
Manny is a business (Complaint, ¶ 11); and that “on information Miller received employee
benefits as a result of performing his screenwriting services …”. (Complaint, ¶ 18). Of these
Plaintiffs’ allegation that Manny is a business does not move the ball forward as “this factor will
generally be of little use” and “carries very little weight, because most companies hire numerous
support personnel.” Aymes, 980 F.2d at 863. In practice, “courts rarely even address this factor.”
Tagare v. Nynex Netowrk Sys. Co., 994 F. Supp. 149, 158 (S.D.N.Y. 1997). Plaintiffs are thus
left with a rather carefully worded allegation on information and belief, no less, of indirect
benefits and right to control the Screenplay, but CCNV cautions against placing too much weight
on the right of control. CCNV, 490 U.S. at 741-742. In fact, CCNV was prompted by attempts to
shoe-horn specially commissioned works covered by Section 101(2) into Section 101(1)
covering traditional employees, just as Plaintiffs do here:
Section 101 plainly creates two distinct ways in which a work can be deemed for
hire: one for works prepared by employees, the other for those specially ordered
or commissioned works which fall within one of the nine enumerated categories
and are the subject of a written agreement. The right to control the product test
ignores this dichotomy by transforming into a work for hire under § 101(1) any
“specially ordered or commissioned” work that is subject to the supervision and
control of the hiring party. Because a party who hires a “specially ordered or
commissioned” work by definition has a right to specify the characteristics of the
product desired, at the time the commission is accepted, and frequently until it is
completed, the right to control the product test would mean that many works that

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could satisfy § 101(2) would already have been deemed works for hire under §
101(1). Petitioners’ interpretation is particularly hard to square with § 101(2)’s
enumeration of the nine specific categories of specially ordered or commissioned
works eligible to be works for hire, e.g., “a contribution to a collective work,” “a
part of a motion picture,”…The unifying feature of these works is that they are
usually prepared at the instance, direction, and risk of a publisher or producer. By
their very nature, therefore, these types of works would be works by an employee
under petitioners’ right to control the product test.
Id. at 741. CCNV similarly disavowed any sort of actual control test. Id. at 742
The reference to “Employment Agreement” in Miller’s contract is equally unavailing as
independent contractors are routinely “employed” to create “a specially ordered or
commissioned work” (under Section 101(2)). See Marvel, 310 F.3d at 291, (“[U]nder agency
law, ‘[t]he manner in which the parties designate the relationship is not controlling, … the mere
use of the word ‘agent’ by parties in their contract does not make one an agent who, in fact, is
not such.” Quoting 3 Am.Jur.2d Agency § 19 (2002)); Carter v. Helmsley-Spear, Inc.71 F.3d 77,
83 (2nd Cir. 1995)(“One of the factors that did not persuade us was the appellants’ simplistic
contention that usage of the words 'employ' or 'employment' in the agreements between the
artists and SIG or the Limited Partnership establishes that the plaintiffs were employees. The use
of these terms does not transform them into ‘magic words’ imbued with legally controlling
significance.”).
1.

Plaintiffs Fail to Allege Most CCNV Factors
i.

Plaintiff Did Not Withhold Taxes or Pay Social Security

The two most important CCNV factors according to Aymes are the hiring party’s tax
treatment of the hired party and whether the hiring party provided traditional employee benefits
to the hired party. 980 F.2d at 863. Aymes makes it very clear that without either “benefits or
pay[ing] social security taxes” that “every case since [CCNV] that has applied the [CCNV] test
has found the hired party to be an independent contractor” governed by Section 101(2), not

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Section 101(1). 980 F.2d, at 861.
Plaintiff fails to allege that any taxes were withheld or paid on behalf of Miller, nor does
Miller’s freelance writing Agreement provide for this. Complaint, ¶ 17, Ex. 1. “The
nonpayment of . . . payroll taxes to or on behalf of the creator support[s] the conclusion that the
creator was an independent contractor rather than an employee." Graham v. James, 144 F.3d
229, 235 (2nd Cir. 1998).
Plaintiffs vaguely allege on information and belief that Miller received benefits, but they
never allege that Manny provided any employee benefits to Miller. See Complaint, ¶ 19 (“under
the terms of the Employment Agreement, Miller collected employee benefits”); ¶ 28 (“on
information and belief [] Miller has received employee benefits as a result of performing
screenwriting services on the Screenplay”).
ii.

Plaintiff Paid Miller for Completion of a Distinct Task

Plaintiffs do not allege that Manny paid Miller a salary, and they cannot. See Complaint,
¶ 17, Ex. 1. The Agreement clearly provides two lump sum payments to Miller for a “FIRST
DRAFT SCREENPLAY” and “FINAL DRAFT SCREEPLAY,” respectively. Complaint, Ex. 1,
¶ 3. “Lump sum payments indicate that [the hired party] was contracted for individual
assignments.” Aymes, 980 F.2d at 863. Plaintiff pleadings show Miller “was paid by the job,”
which once again “indicate[s] that [Miller] was an independent contractor” governed by Section
101(2). Marco v. Accent Pub. Co., 969 F.2d 1547, 1550 (3d Cir. 1992).
iii.

Writing Screenplays Is a Skilled Occupation

Plaintiff does not allege whether or not Miller, as a writer of fiction, was engaged in a
skilled occupation, but it is clear that he was. “The free-lance writers[’] work involved

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uncommon skills.” In re Brown, 743 F.2d 664, 668 (9th Cir. 1984). “Artists . . . are highly skilled
occupations,” Carter v. Helmsley-Spear, Inc., 861 F. Supp. 303, 318 (S.D.N.Y. 1994), aff'd in
part, vacated in part on other grounds, rev'd in part on other grounds, 71 F.3d 77 (2d Cir. 1995),
and “filmmaking is a collaborative process typically involving artistic contributions from large
numbers of people, including . . . screenwriters.” 16 Casa Duse, LLC v. Merkin, 791 F.3d 247,
258 (2d Cir. 2015). Plaintiffs do not, and cannot, allege otherwise.
iv.

Miller Provided His Own Tools

Plaintiffs do not allege that Manny provided any tools or instrumentalities to Miller to
write the Screenplay, nor allege that Miller did not “suppl[y] his own tools” CCNV, 490 U.S., at
752. And the Agreement, of course, contains no provision regarding the provision to Miller of
paper, writing utensils, or any other materials. See Complaint, ¶ 17, Ex. 1. This likewise
supports that Miller was “an independent contractor” governed by Section 101(2) because “the
instrumentalities and tools of the job belonged to [him].” Keller v. Niskayuna Consol. Fire Dist.
1, 51 F. Supp. 2d 223, 229 (N.D.N.Y. 1999).
v.

Plaintiff Does Not Allege Defendants Worked on Its Premises

Plaintiff alleges that Miller and Cunningham “met” but the Complaint never specifies a
place of business, nor does Plaintiff allege that most of the writing Miller performed was done
on Manny’s business premises. This also weighs in favor of the conclusion that Miller was a
independent contractor not Manny’s “employee.” See Aymes, 980 F.2d, at 865.

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vi.

Miller Was Only Hired for One Task

Plaintiffs do not allege, and the Agreement does not provide for Miller’s engagement for a
period longer than the time required for Miller to write a first and final draft screenplay.
Complaint, ¶ 17, Ex. 1. Like most freelance writer’s Miller “engagement was project by project.”
Graham v. James, 144 F.3d 229, X (2nd Cir. 1998). Plaintiffs allege that Miller delivered the
screenplay in approximately two months (Complaint, ¶ 22), and “two months” is a “relatively
short time,” according to CCNV, 490 U.S. at 752-753. As the Complaint alleges and the
Agreement shows, Miller’s engagement was for a particular project and for a short term, which
again supports Miller’s status as an independent contractor. “Independent contractors are
typically hired only for particular projects.” Aymes, 980 F.2d at 863. Miller’s “position was
expressly temporary.” Talbert v. Am. Risk Ins. Co., 405 F. App'x 848, 856 (5th Cir. 2010)
(finding hired party was an independent contractor); Thibault v. Bellsouth Telecomm., Inc., 612
F.3d 843, 849 (5th Cir.2010) (noting that whether the job is “temporary, project-by-project, onagain-off-again relationship” this points to the conclusion that the hired party was an
“independent contractor” governed by Section 101(2)); Christians of California, Inc. v. Clive
Christian New York, LLP, 13-CV-275 KBF, 2014 WL 4743422, at *2 (S.D.N.Y. Sept. 15, 2014)
(holding that the hired party was an “independent contractor” as he was “hired to perform a
specific short-term project.”).
vii.

Plaintiffs Do Not and Cannot Allege They Had the Right to Assign
Miller Additional Tasks

Plaintiffs do not allege, and based on the terms of the Agreement, cannot allege that it had
the right to assign Miller additional tasks. “There is no claim in this case that the defendants had
the right to assign, or in fact assigned additional projects.” SHL Imaging, Inc. v. Artisan House,

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Inc., 117 F. Supp. 2d 301, 314 (S.D.N.Y. 2000) (holding that this supports a finding that the
hired party was an independent contractor governed by Section 101(2)); see also Aymes, 980
F.2d at 857, 863. Manny “had no right to assign additional projects” which “weigh[s] heavily
against” that Miller was an “employee” under Section 101(1). CCNV, 490 U.S. 730, 731 (1989).
viii.

Plaintiffs Do Not Allege any Discretion Over When and How
Long Miller Worked

Plaintiff does not allege it controlled how long or when Miller was to write the
Screenplay, nor does the Agreement contain any provisions regarding the hours or days that
Miller must work. See Complaint, ¶ 20, Ex. 1. The Agreement does not even set a schedule for
completion and delivery by Manny of the first and final drafts of the Screenplay it commissions.
Based on the Complaint and the attached Agreement incorporated therein, Miller “had absolute
freedom to decide when and how long to work in order to meet his deadline,” which also
strongly supports that the conclusion that he worked as an independent contractor. See CCNV,
490 U.S. at 731.
ix.

Plaintiffs Do Not Allege That Miller Had No Discretion in Hiring
Assistants

Plaintiffs do not allege that Miller was not free to hire his own assistants, and the
Agreement does not so restrict Miller. Complaint, ¶ 17, Ex. 1. Miller therefore had “discretion in
hiring and paying assistants” which supports that he functioned as an independent contractor.
CCNV, 490 U.S. at 731.
“To survive a motion to dismiss, a complaint must contain sufficient factual matter,
accepted as true, to state a claim to relief that is plausible on its face.” Iqbal, 129 S.Ct. at 1949
(citations omitted). Plaintiffs clearly fail to do so as to their First Count. Unable to even allege a
majority of common law agency factors necessary to state a claim that Miller wrote the

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Screenplay as an hierarchical “employee” (instead of as an independent contractor) Plaintiffs fail
to state a claim that the Screenplay was a “work for hire” under Section 101(1). See CCNV, 490
U.S. at 752-53. This even more so when the pleading and Agreement incorporated therein point
the inevitable conclusion that Miller, a freelance writer, wrote the Screenplay as an independent
contractor governed by Section 101(2).
In light of Plaintiffs’ clear failure under Section 101(1) and (2) to plead a cognizable
“work for hire” claim, the vast majority of the allegations in Plaintiff’s Complaint regarding the
alleged invalidity of the Termination Notices based on the Screenplay’s purported status as a
“work for hire” are thus “mere conclusory statement[s]” and, as such, do not deter dismissal of
Count I for failure to state a claim for relief. Iqbal, 129 S.Ct. at 1949 (2009).
C.

Plaintiff’s Fail to Allege that Anyone Other Than Miller Drafted the
Screenplay

Plaintiffs fail to allege anyone other than Miller contributed actual copyrightable
expression. Plaintiffs simply and vaguely allege that “Scudari, on behalf of Georgetown,
provided extensive notes, mark-ups, and ideas which were incorporated into the final shooting
script.” Complaint, ¶ 23. Plaintiffs allege that Scudari provided notes and ideas but nobody
“may copyright [] ideas. The copyright is limited to those aspects of the work—termed
‘expression’—that display the stamp of the author's originality.” Harper & Row Publishers, Inc.
v. Nation Enterprises, 471 U.S. 539, 544 (1985).
Plaintiffs thus fail to allege sufficient facts to support their claim that even if the
Termination Notices are valid (as they are) anyone other than Miller owns copyrightable
elements of the Friday the 13th Screenplay under the Copyright Act. Courts “are not bound to
accept as true a legal conclusion couched as a factual allegation.” Iqbal, 129 S.Ct. at 1950
(2009). Plaintiffs never “show that the [they are] entitled to relief,” because their “facts do not

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permit the court to infer more than the mere possibility” of their conclusory allegation. Id.
(internal citations omitted). Plaintiffs fail to adequately plead facts to support their conclusion
and therefore fail to state a claim upon which relief can be granted. Id.
Plaintiffs’ vague allegations also defy what Plaintiffs Manny and Horror’s closely-related
predecessor Georgetown represented Friday the 13th’s credits. Defendant requests that the court
take judicial notice of the fact that, in the Film’s credits, Victor Miller is given the sole writing
credit on the film. “A judicially noticed fact must be one not subject to reasonable dispute in that
it is either (1) generally known within the territorial jurisdiction of the trial court or (2) capable
of accurate and ready determination by resort to sources whose accuracy cannot reasonably be
questioned.” Kaggen v. I.R.S., 71 F.3d 1018, 1019 (2d Cir. 1995). One can readily and accurately
determine that this fact is true by viewing the credits in Friday the 13th.
The following sections duplicate sections included in Defendant’s concurrently filed
Motion to Strike, but in the interest of accuracy and completeness they are included in this
Motion to Dismiss.
III.

PLAINTIFF’S STATE-LAW COUNTS ARE PREEMPTED
Plaintiffs’ state-law counts are preempted as none are based upon any conduct

independent of Miller’s assertion of copyright by serving and filing Termination Notices.
The Supreme Court has recognized three ways in which federal law may preempt state
statutory and common law: (1) “express preemption,” (2) “field preemption”, or (3) “conflict
preemption.” See Pacific Gas & Elec. Co. v. Energy Resources Conservation and Dev. Comm’n,
461 U.S. 190, 204 (1983). Express preemption refers to an explicit statutory command that state
law be displaced. See Morales v. Trans World Airlines, Inc., 504 U.S. 374, 382. Under field or
implied preemption, state law may be displaced “if federal law so thoroughly occupies a

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legislative field as to make reasonable the inference that Congress left no room for the States to
supplement it.” Cipollone v. Liggett Group, Inc., 505 U.S. 504, 516 (1992) (internal quotation
marks omitted). Finally, conflict preemption displaces state law when it is impossible to comply
with both the state and the federal law, see Pacific Gas, 461 U.S. at 204, or when the state law
“stands as an obstacle to the accomplishment and execution of the full purposes and objectives of
Congress.” Jones v. Rath Packing Co., 430 U.S. 519, 525 (1977).
The Copyright Act contains an express preemption provision, stating in pertinent part:
[A]ll legal or equitable rights that are equivalent to any of the exclusive rights
within the general scope of copyright as specified by section 106 [of the
Copyright Act] in works of authorship that are fixed in a tangible medium of
expression and come within the subject matter of copyright as specified by
sections 102 and 103 ... are governed exclusively by this title.
17 U.S.C.A. § 301(a). Courts and commentators have thus adopted a two-part preemption
analysis encompassing (1) a “subject matter requirement” and (2) a “general scope” or
"equivalency" requirement. See National Basketball Ass'n v. Motorola, Inc., 105 F.3d 841, 848
(2d Cir. 1997); 1 Melville B. Nimmer & David Nimmer, Nimmer on Copyright (“Nimmer”)
§1.01[B][1]-[2].
The Copyright Act “broadly preempts state law claims.” Ritchie v. Williams, 395 F.3d
283, 285 (6th Cir. 2005). “Copyright protection is both explicit and broad: [It] prohibits stat-law
protection for any right equivalent to those in the Copyright Act.” G.S. Rasmussen & Associates,
Inc. v. Kalitta Flying Serv., Inc., 958 F.2d 896, 904 (9th Cir. 1992). “The Copyright Act sets out
the test for preemption of that state statutory or common law which may conflict with the federal
policies embodied in the Act.” Harper & Row Publishers Inc. v. National Enterprises, 723 F. 2d
195, 199 (2nd Cir. 1983), rev’d on other grounds, 105S.Ct. 2218 (1985).
Section 102 provides that “[c]opyright protection subsists, in accordance with this title, in
original works of authorship fixed in any tangible medium of expression.” 17 U.S.C. § 102. As a

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tangible work of authorship, the Screenplay “comes within the subject matter of section 102.”
Section 301(a) preempts “all legal or equitable rights that are equivalent to any of the
exclusive rights within the general scope of copyright as specified by section 106 . . . .” Thus
“[t]he Copyright Act preempts a state cause of action if the subject matter of the state law right
falls within the subject matter of federal copyright law and the state law rights are equivalent to
the rights federal copyright law protects.” Netzer v. Continuity Graphic Associates, Inc., 963 F.
Supp. 1308, 1321 (S.D.N.Y. 1997). “The reference to Section 106 … in Section 301 … should
be construed by way of identification not limitation. Accordingly, if a state-created right is
‘within the general scope of copyright,’ it is subject to pre-emption, even if the precise contours
of the right differ from any of those conferred by Section 106.” Nimmer, § 1.01[B][1] at 1-11
(quoting H.R. Rep. No. 94-1476 (1976) at 130). “[T]he shadow actually cast by the Act's
preemption is notably broader than the wing of its protection.” U.S. Ex Rel. Berge v. Board of
Trustees of Univ. of Ala., 104 F.3d 1453, 1463 (4th Cir.), cert. denied, 522 U.S. 916 (1997).
“To survive preemption, the state cause of action must protect rights that are qualitatively
different from the copyright rights.” Del Madera Properties v. Rhodes and Gardner, Inc., 820
F.32d 973, 976 (9th Cir. 1987). The plaintiff must demonstrate that an “‘extra element’ changes
the ‘nature of the action so that it is qualitatively different’” from an action under the Copyright
Act. See Kregos v. Associated Press, 3 F.3d 656, 665–66 (2d Cir. 1993) (quoting Computer
Assocs. Int'l v. Altai, Inc., 982 F.2d 693, 716 (2d Cir. 1992) (emphasis in original). But
preemption does not turn on the ability to articulate, in the abstract, some “extra element” in a
state-law cause of action. Instead, “the court should engage in a fact-specific inquiry into the
actual allegations underlying the claims … so as to determine the ‘gravamen’ of the state law
claim.” Idema v. Dreamworks, Inc., 162 F. Supp. 2d 1129, 1190 (C.D. Cal. 2001), citing Entous

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v. Viacom International Inc., 58 U.S.P.Q.2d 1628, 1634-35 (C.D.Cal.2001) and Kodadek v. MTV
Networks, Inc., 152 F.3d 1209, 1211-13 (9th Cir.1998).
Here the gravamen of each of Plaintiffs’ state-law claims is their assertion of copyright in
the Screenplay. Plaintiffs’ state-law claims are “part and parcel of [its] copyright claim” and
nearly indistinguishable from it. Del Madera, 820 F.3d at 976. Each of Plaintiffs’ state-law
counts essentially duplicate its federal count, by asserting copyright in the Screenplay. See
Complaint, ¶¶ 35-54. Plaintiffs’ assertion and protection of copyright via its state-law counts
naturally implicates “the exclusive rights within the general scope of copyright.” 17 U.S.C.A. §
301(a). Any other conclusion would be illogical. See H.R. Rep. 94-1476 (1976) at 130 (“The
intention of section 301 is to preempt and abolish any rights under the common law or statutes of
a State that are equivalent to copyright and that extend to works coming within the scope of the
Federal copyright law.”).
Trenton v. Infinity Broad. Corp., 865 F. Supp. 1416 (C.D. Cal. 1994) is illustrative.
There the plaintiff, like Plaintiffs here, asserted several state-law causes of action, based on its
alleged ownership of the copyright to the format for the successful “Loveline” radio program.
The district court found many of these claims preempted by the Copyright Act, including unfair
competition and slander of title, holding that “they are based entirely upon plaintiff's owning the
Loveline format. … After carefully reviewing plaintiff's complaint and in particular these
property-based causes of action, this Court finds that these causes of action in essence merely
assert a protectable copyright interest in the Loveline format and defendants' unauthorized use
thereof.” Id. at 1428. “The fact that the state-created right is either broader or narrower than its
federal counterpart will not save it from preemption.” Id. (quoting Nimmer, § 1.01[B][1]).

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A.

Count II for Breach of Contract Is Preempted

Cases finding breach of contract claims not to be preempted employ two basic theories in
determining that the claims do not protect rights equivalent to copyright: (i) “the promise” to
perform the contract constitutes an “extra element;” see, e.g., Architectronics, Inc. v. Control
Systems, Inc., 935 F.Supp. 425, 438 (S.D.N.Y.1996); and (ii) the scope of rights protected by
contract is not equivalent to that protected by copyright; see ProCD, Inc. v. Zeidenberg, 86 F.3d
1447, 1454 (7th Cir.1996) (holding that a claim for breach of a software shrinkwrap license
under Wisconsin law is not preempted).
The problem with the first approach is that the actual “promise” at issue may in fact not
be an “additional element,” but so inextricably entwined with a copyright so as to undermine
preemption of the Copyright Act. See Endemol Entm't v. Twentieth Television Inc., 48
U.S.P.Q.2d 1524, 1528 (C.D. Cal. 1998) (unpublished) (holding breach of contract claim not
preempted as no additional rights other than copyright are asserted). The second approach
focuses on the difference in the scope of protection provided by copyright and contract. But as
the examples given in ProCD make clear this make sense only where a plaintiff sues on
contractual rights that are qualitatively different than those in the Copyright Act. 86 F.3d at 1455.
Without explicitly adopting a new rationale, some courts have premised their analysis not
on conceptual difference between contracts and copyrights, but on whether the specific
contractual provisions alleged in the complaint protect or create rights not equivalent to
copyright. See, e.g., National Car Rental v. Computer Associates, 991 F.2d 426, 432–433 (8th
Cir.), cert. denied, 510 U.S. 861 (1993) (contractual restriction on use of software license
prohibiting processing of data for a third party constitutes an additional element precluding
preemption, because “[a]bsent the parties’ agreement, this restriction would not exist”). See also

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id. at 434 n. 6 (“Because we decide that the specific contract right [counterclaimant] seeks to
enforce is not equivalent … we do not need to decide whether a breach of contract claim based
on … the exclusive copyright rights is preempted.”)
Nimmer lends support to this more specific method of analysis. Nimmer § 1.01[B][1][a]
(“at times a breach of contract cause of action can serve as a subterfuge to control nothing other
than … works within the subject matter of copyright”). See also Wrench LLC v. Taco Bell Corp.,
256 F.3d 446, 457 (6th Cir. 2001) (“We do not embrace the proposition that all state law contract
claims survive preemption.”).
Under this more focused approach many cases have found that the actual breach of
contract claim at issue is preempted under 17 U.S.C. § 301(a). See Am. Movie Classics Co. v.
Turner Entm't Co., 922 F. Supp. 926, 931 (S.D.N.Y. 1996)(“[A] breach of contract claim is
preempted if it is merely based on allegations that the defendant did something that the copyright
laws reserve exclusively to the plaintiff.”); Wolff v. Inst. of Elec. & Elecs. Engineers, Inc., 768 F.
Supp. 66, 69 (S.D.N.Y. 1991) (“[Defendant] breached its contract with plaintiffs … by infringing
plaintiffs’ copyright. It is difficult to see how the resulting claims are qualitatively different.
Accordingly the breach of contract claim is preempted.”); Arpaia v. Anheuser-Busch Companies,
Inc., 55 F. Supp. 2d 151, 162 (W.D.N.Y. 1999)(“[T]he plaintiff's complaint clearly states that his
breach of [] contract claim is based upon the defendants’ alleged use of his copyrighted works.
Accordingly . . . the breach of [] contract claim is preempted.”); Selby v. New Line Cinema
Corp., 96 F. Supp. 2d 1053, 1062 (C.D. Cal. 2000)(finding preemption in that plaintiff’s breach
of “contract claim falls squarely into the category of contract claims that allege no additional
rights”); Worth v. Universal Pictures, Inc., 5 F.Supp.2d 816, 822 (C.D. Cal. 1997) (holding
“contract is preempted insofar as it relates to the copyrighted material … Movie screenplays, the

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subject matter at issue, are encompassed within the federal copyright law.”).
This Court should adopt the pragmatic fact-specific approach.
Here, Count II alleges that Miller’s Screenplay is a “work for hire” under the Copyright
Act and that Miller’s Termination Notices and assertion of copyright thereunder constitutes a
breach of the Agreement. Complaint ¶ 40. While the “extra element” of a “promise” may under
the right set of facts render a breach of contract claim “qualitatively different” from this claim
under the Copyright Act this case presents no such set of facts. Computer Assocs. Int’l. Inc.., 982
F.2d at 716. Indeed, it is clear from Manny’s elucidation of Count II that it depends on the same
alleged facts underpinning the copyright claim in Count I. Compare Complaint, ¶¶ 32-34 to ¶¶
35-42. Nor is the scope of rights asserted in Count II qualitatively different than the scope of
rights protected by copyright. In fact, Count II seeks to protect Manny’s alleged copyright in the
Screenplay and thus rights equivalent to exclusive copyright rights. Manny does not allege any
prohibited conduct beyond that allegedly prohibited by the Copyright Act.
“Where a claim for breach of contract fails to assert an ‘extra element’ outside those
necessary for a claim of copyright ownership or infringement, it ‘can serve as a subterfuge to
control nothing other than reproduction, adaptation, distribution, etc., of works within the subject
matter of copyright’ and therefore is preempted by the Copyright Act.” DeCarlo v. Archie Comic
Publications, Inc., 127 F. Supp. 2d 497, 509 (S.D.N.Y.), aff'd, 11 F. App’x 26 (2d Cir.
2001)(quoting Nimmer § 1.01[B][1][a]). To put it another way, the same Agreement that Manny
claims was purportedly breached by Miller would be breached by Miller’s assertion of “any of
the exclusive rights within the general scope of copyright,” 17 U.S.C. § 301, with no qualitative
distinction between the two. See National Car Rental, 991 F.2d at 431 (requiring an analysis of
whether “the right in question is ‘infringed by the mere act of reproduction, performance,

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distribution or display.’”)
As both parts of the Section 301(a) test are met as to Count II, it is preempted.
B.

Count III for Slander of Title is Preempted

As Horror’s Count III for slander of title is also solely premised on Miller’s assertion of
copyright in the Screenplay (Complaint, ¶¶ 44, 45), it is preempted by the Copyright Act. The
claim of slander of title has been held preempted. See Cramer v. Crestar Fin. Corp., 67 F.3d 294
(4th Cir. 1995) (unpublished) (affirming “dismissal of several other claims (specifically … the
slander of title to software claim) on the grounds that they were preempted by section 301(a) of
the Copyright Act”); Trenton., 865 F. Supp. at 1428 (dismissing two “slander of title” causes of
action “because these property-based causes of action … in essence merely assert a protectable
copyright interest in the [radio] format and defendants’ unauthorized use thereof.”).
It is true that Count III alleges malice, however, “the mere fact that a state law requires
scienter as a condition to liability will not save if from preemption.” Nimmer, § 1.01[B][1] at 112. “An action will not be saved from preemption by elements such as awareness or intent,
which alter ‘the action's scope but not its nature ….’” Computer Associates Int'l, Inc., 982 F.2d at
717 (quoting Mayer v. Josiah Wedgwood & Sons, Ltd., 601 F. Supp. 1523, 1535 (S.D.N.Y.
1985). “[T]he element of ‘malicious intent’ may alter the scope of the claim beyond that limited
by a general intent requirement, but it does not alter its nature.” Maxient, LLC v. Symplicity
Corp., 63 F. Supp. 3d 592, 599–600 (E.D. Va. 2014) (holding that conversion claims were
preempted by the Copyright Act). As Count III is solely based on alleged “malice” and this does
not qualify as “an extra element’ sufficient to avoid preemption, Count III is preempted.
C.

Count IV for Unfair Competition Is Preempted

Count IV alleging unfair competition under the Connecticut Unfair Trade Practices Act

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(“CUTPA”) based on “Miller … sending the false Termination Notices” (Complaint, ¶ 50), like
Counts II and III, is a mere reformulation of Count I for declaratory relief under the Copyright
Act. In fact, Plaintiffs “repeat and reallege, and incorporate [t]herein by reference” all of the
allegations in Count I. (Complaint ¶ 49). This alone supports preemption.1 Courts routinely
preempt such unfair competition (“UCL”) claims as inextricably intertwined with rights under
the Copyright Act. See Kregos v. Associated Press, 3 F.3d 656, 666 (2d Cir. 1993)(holding UCL
claim preempted because it “contains no element to qualitatively differentiate it from those areas
protected by copyright.”); Twentieth Century Fox Film Corp. v. Marvel Enterprises, Inc., 277
F.3d 253, 257 (2d Cir. 2002) (dismissing UCL claim as “preempted by the copyright laws.”).
Warner Bros. Inc. v. American Broadcasting Co’s., 720 F.2d 231, 247 (2d Cir. 1983)(same). 2
As with Count III, Horror’s allegation that Miller acted knowingly (Complaint ¶ 50) does not
save it from preemption. Computer Associates Int'l, Inc., at 982 F.2d at 717.
___________________
Notwithstanding the Copyright Act’s express preemption provision, “field preemption”
and “conflict preemption” likewise support dismissal of Plaintiffs’ state-law counts. As shown
above, the three state-law counts are each premised on the purported invalidity of Miller’s
Termination Notices based on the allegation that the Screenplay is a “work-for-hire.” However,

1

See Motown Record Corp. v. George A. Hormel & Co., 657 F. Supp. 1236, 1239 (C.D. Cal.
1987) (dismissing California UCL claim that incorporated by reference plaintiff’s copyright
claim). Blue Nile, Inc. v. Ice.com, Inc., 478 F. Supp. 2d 1240, 1250 (W.D. Wash. 2007)
(“Plaintiff's [UCL] claim is dismissed as preempted because by incorporating the copyright
claims by reference, the claim is based on rights equivalent to those protected by copyright.”);
MEECO Mfg. Co. v. True Value Co., Copy. L. Rep. (CCH) P29,368, 2007 U.S. Dist. LEXIS
25986 at *14 (W.D. Wash. Apr. 3, 2007) (same).
2

See also Del Madera Properties v. Rhodes & Gardner, Inc., 820 F.2d 973, 977 (9th Cir. 1987)
(finding preemption of UCL claim where “[t]he argument is constructed upon the premise” of a
Copyright Act violation.”); Kodadek, 152 F.3d at 1212-13 (dismissing UCL claim where
allegations were “within the ‘subject matter’ of the Copyright Act”).

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both the termination right and the “work for hire” doctrine, are creatures of federal copyright law
and “Congress left no room for the States to supplement” these fields. Jones, 430 U.S. at 525.
Furthermore, Plaintiffs’ aggressive state-law counts conflict with the strong federal policies
embodied in the Act’s termination provisions. Finally, Plaintiffs’ state-law counts which heavily
rely on the Agreement conflict with Congress’s mandate that “[t]ermination … may be effected
notwithstanding any agreement to the contrary.” 17 U.S.C. § 203(a)(5). It also does not sit well
that an author who exercises a colorable federal right to statutorily terminate a contractual
copyright transfer can be held under state-law to have thereby breached a contract.
IV.

PLAINTIFF’S STATE-LAW COUNTS FAIL FOR ADDITIONAL REASONS
An author’s statutory termination cannot constitute a breach of contract because, as

discussed above, “[t]ermination … may be effected notwithstanding any agreement to the
contrary,” 17 U.S.C. § 203(a)(5). “If the [A]greement[] [is] interpreted to waive [Miller’s] rights
to recapture the copyrights at issue, then [it is] plainly an “agreement[] to the contrary” of the
Copyright Act’s termination provisions and unenforceable to that extent.” Ray Charles. 919 F.
Supp. at 1066 (holding, in striking plaintiff’s breach of contract claim under California’s antiSLAPP statute, that “the Copyright Act prevents the Court from interpreting the agreements
signed by Defendants as limiting their statutory termination rights”). See Marvel, 310 F.3d at 290292 (as termination may be exercised “notwithstanding any agreement to the contrary” publisher
cannot bar termination by contractually re-characterizing work as “for hire” after creation).
Manny’s breach of contract claim is based on Plaintiffs’ allegation that the Screenplay is
a “work for hire” and that Miller is purportedly an “employee” (under Section 101(1) of the
Copyright Act). But as this is a function of federal common law agency factors, CCNV, 490 U.S.
at 739, not contract, Miller’s Termination cannot constitute a breach of contract.

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Manny’s breach of contract claim is also predicated on Miller having no right to
terminate the copyright grant, but as explained supra Section I, Plaintiffs failed to state that
claim.
Count III also fails to state a claim. “A cause of action for slander of title consists of the
uttering or publication of a false statement derogatory to the plaintiff’s title, with malice, causing
special damages as a result of diminished value of the plaintiff’s property in the eyes of third
parties. The publication must be false, and the plaintiff must have an estate or interest in the
property slandered. Pecuniary damages must be shown in order to prevail on such a claim.”
Gilbert v. Beaver Dam Ass’n of Stratford Inc., 85 Conn. App. 663, 672–73 (2004). As previously
discussed, supra Section I, Plaintiffs fail to allege facts adequate to prove that Defendant created
Friday the 13th as a work for hire. Therefore, Plaintiffs have not alleged facts to show that the
termination notices contain any “false statement” and fail to allege adequate facts to prove their
slander of title Count. Iqbal, 129 S.Ct. at 1949 (2009).
Count IV likewise fails to state a claim. “In order to allege a CUTPA violation properly,
the plaintiff must allege, inter alia, that the acts complained of were performed in a trade or
business.” Quimby v. Kimberly Clark Corp., 28 Conn. App. 660, 669 (1992)(citing
Connecticut General Statutes § 42-110b and Web Press Services Corporation v. New London
Motors, Inc., 203 Conn. 342, 354 (1987)). See also Pergament v. Green, 32 Conn.App. 644, 655
(1993) (same). The Complaint contains no allegation that the Termination Notices, alleged to
violate CUTPA, were Miller’s trade or business. See Complaint ¶¶ 49-54. Nor could they be.
CUTPA defines a “trade or commerce” as “the advertising, the sale or rent or lease, the offering
for sale or rent or lease, or the distribution of any services and any property, tangible or
intangible, real, personal or mixed, and any other article, commodity, or thing of value in this

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state.” Conn. Gen. Stat. § 42–110 a(4).
First the drafting, service and filing of the Termination Notices from California were not
“in this state [Connecticut].” Miller Decl., ¶ 19. Moreover, the practice complained of cannot be
incidental to the true trade or business of the defendant, here, a writer.
Brandewiede v. Emery Worldwide, 890 F. Supp. 79, 81 (D. Conn. 1994), aff'd 66 F.3d
308 (2d Cir. 1995) is instructive:
“Plaintiff has not sustained his burden of proving that defendant is engaged in the
'trade or commerce' of selling, purchasing or leasing commercial aircraft. There is
no viable claim under CUTPA when the practice complained of is incidental to
the true trade or business conducted. The [] complaint states that '[defendant] …
was frequently involved in the purchase, sale and leasing of commercial aircraft.'
… [defendant] is primarily engaged in the business of overnight freight delivery.
In this case, defendant's conduct of leasing the aircraft was incidental to its
primary business of providing overnight freight service.”
See Arawana Mills Co. v. United Techs. Corp., 795 F. Supp. 1238, 1253 (D. Conn. 1992)
(dismissing CUTPA count as “defendant’s act of leasing property from plaintiff is incidental
to…its true business…the repair and servicing of aircraft engines.”).
Plaintiffs simply allege that the same act (the Termination Notice) that purportedly
constitutes a breach of contract is the unfair act that violates CUTPA, but a “simple breach of
contract does not offend traditional notions of fairness, and . . . does not offend public policy to
invoke CUTPA.” Boulevard Associates v. Sovereign Hotels, Inc., 72 F.3d 1029, 1038-39 (2d
Cir.1995) (“the only allegations in count two different from count one are that ‘the actions of the
defendant constitute violations of the [CUTPA] in that said actions were ‘unfair, oppressive,
deceptive and unscrupulous ...’ This is conclusory language without legal effect . . . no facts are
alleged to support the conclusions. Therefore, the allegations are an insufficient predicate upon
which to base a CUTPA claim.”); Computer Horizons Corp. v. Factorum, Inc., No. CV
980584758S, 1999 WL 1126311, at *2 (Conn. Super. Ct. Nov. 19, 1999) (“The plaintiff must

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allege facts which allege more than a mere breach of contract.”). Furthermore, the Count is
predicated on false termination notices being filed, but Plaintiffs failed to allege sufficient facts
to support that claim. For all of the above additional reasons, Count IV is deficient as a matter of
law and must be struck.
CONCLUSION
For the foregoing reasons, Defendant requests that Plaintiff’s Complaint be dismissed
with prejudice.

DEFENDANT,
VICTOR MILLER
By: /s/ Marc Toberoff
MARC TOBEROFF (FBN phv08515)
TOBEROFF & ASSOCIATES, PC
23823 Malibu Rd.Ste. 50-363
Malibu, CA 90265
Federal Bar No. phv08515
Telephone: (310) 246-3333
Facsimile: (310) 246-3101
Email: mtoberoff@toberoffandassociates.com

His attorneys.

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UNITED STATES DISTRICT COURT
DISTRICT OF CONNECTICUT
Horror Inc. and The Manny
Company,
Plaintiffs,
vs.
Victor Miller & Does 1 through 10,
Defendants.

Case No.: 3:16-cv-01442-SRU

CERTIFICATE OF SERVICE

The undersigned hereby certifies that the foregoing Declaration of Victor
Miller in Support of Defendant’s Motion to Strike, dated October 17, 2016 was
served electronically by the Court’s ECF system on said date and that all interested
parties in this case are registered CM/ECF users.
The undersigned declares under penalty of perjury under the laws of the
United States that the above is true and correct.
Dated: October 17, 2016

/s/ Marc Toberoff