802 F.2d 1193 (9th Cir. 1986), 85-6094, Landsberg v. Scrabble Crossword Game Players, Inc.

Docket Nº:85-6094.
Citation:802 F.2d 1193
Party Name:231 U.S.P.Q. 658 Mark LANDSBERG, Plaintiff-Appellee, v. SCRABBLE CROSSWORD GAME PLAYERS, INC., Selchow & Richter Company, and Crown Publishers, Inc., Defendants-Appellants.
Case Date:October 21, 1986
Court:United States Courts of Appeals, Court of Appeals for the Ninth Circuit

Page 1193

802 F.2d 1193 (9th Cir. 1986)

231 U.S.P.Q. 658

Mark LANDSBERG, Plaintiff-Appellee,



Company, and Crown Publishers, Inc., Defendants-Appellants.

No. 85-6094.

United States Court of Appeals, Ninth Circuit

October 21, 1986

Argued and Submitted June 2, 1986.

Page 1194

[Copyrighted Material Omitted]

Page 1195

Steven Kipperman, San Francisco, Cal., for plaintiff-appellee.

Walter D. Ames, Washington, D.C., for defendants-appellants.

Appeal from the United States District Court for the Central District of California.

Before GOODWIN, TANG and FLETCHER, Circuit Judges.

GOODWIN, Circuit Judge.

In this second appeal, defendants challenge a summary judgment for plaintiff following our remand in Landsberg v. Scrabble Crossword Game Players, Inc., 736 F.2d 485, 489 (9th Cir.1984) (Landsberg I ). We affirm the judgment as modified.

Plaintiff Mark Landsberg wrote a book on strategy for winning at the Scrabble board game. He contacted defendant Selchow & Righter Co. (S & R), the owner of the Scrabble trademark, to request permission to use the mark. In response, S & R

Page 1196

requested a copy of the manuscript, which Landsberg provided. After prolonged negotiations between them regarding the possible publication by S & R of the manuscript were broken off, S & R brought out its own Scrabble strategy book. Landsberg sued S & R, its subsidiary Scrabble Crossword Game Players, Inc., Crown Publishers, Inc., the publishers of S & R's book, and several individual defendants in state court for copyright infringement and breach of contract. Defendants successfully removed under 28 U.S.C. Sec. 1441(a) (1982). After a bench trial, the district court found that: S & R's book was based upon Landsberg's manuscript; the two works were substantially similar; defendant S & R had copied both the ideas and the form of expression of Landsberg's work; and that defendants had infringed Landsberg's rights. Landsberg I reversed the judgment for Landsberg on his copyright infringement claim because the S & R book lacked the degree of similarity required for infringement of a nonfiction work. Landsberg I, 736 F.2d at 489. We remanded for further proceedings on whether "circumstances and conduct manifesting the terms and existence of a contract precede[d] or attend[ed] disclosure of the idea." Id. Upon remand, the district court held a status conference and the parties submitted additional briefs. The court then made supplemental findings of fact and conclusions of law and entered judgment for plaintiff on his contract claim. Defendants now appeal from this judgment. We affirm.

I. The district court's finding that defendants had breached an implied-in-fact contract with Landsberg

Defendants' principal argument on appeal is that the idea which is the subject of the alleged implied-in-fact contract is that of a book about Scrabble strategy, and that the idea was disclosed in Landsberg's first letter to S & R. This argument treats the trial testimony regarding the distinction between ideas and their expression, which was central to the copyright claim, as determinative of the subject of the implied contract. The contract claim turns not upon the existence of a protectible property interest, however, but upon the implied promise to pay the reasonable value of the material disclosed. See Donahue v. Ziv Television Programs, Inc., 245 Cal.App.2d 593, 601, 54 Cal.Rptr. 130, 140 (1966). At issue is thus whether an implied contact was made, and whether defendants' use of the manuscript violated its terms. Landsberg's proprietary interest in the form of expression is irrelevant.

California law allows for recovery for the breach of an implied-in-fact contract when the recipient of a valuable idea accepts the information knowing that compensation is expected, and subsequently uses the idea without paying for it. Densy v. Wilder, 46 Cal.2d 715, 733, 299 P.2d 257, 267 (1956). If disclosure occurs before it is known that compensation is a condition of its use, however, no contract will be implied. Id. at 739, 299 P.2d 270. Thus, if Landsberg unconditionally disclosed his manuscript before informing S & R that he expected compensation for its use, his contract claim fails under California law.

The district court found in Landsberg I that defendants had copied Landsberg's manuscript. We remanded for the limited purpose of determining whether Landsberg disclosed his manuscript before an implied contract had been formed. The district court's supplemental factual findings address this...

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