Batjac Productions Inc. v. GoodTimes Home Video Corp., 97-55947

• Decision Date: 05 November 1998
• Docket Number: No. 97-55947,97-55947
• Parties: 1998 Copr.L.Dec. P 27,825, 48 U.S.P.Q.2d 1647, 98 Cal. Daily Op. Serv. 8208, 98 Daily Journal D.A.R. 11,443 BATJAC PRODUCTIONS INC., a California Corp., Plaintiff-Appellant, v. GOODTIMES HOME VIDEO CORP., a Delaware Corp.; Marybeth Peters, Register of Copyrights, Defendants-Appellees.
• Court: U.S. Court of Appeals — Ninth Circuit

Page 1223

160 F.3d 1223

1998 Copr.L.Dec. P 27,825, 48 U.S.P.Q.2d 1647,

98 Cal. Daily Op. Serv. 8208,

98 Daily Journal D.A.R. 11,443

BATJAC PRODUCTIONS INC., a California Corp., Plaintiff-Appellant, v. GOODTIMES HOME VIDEO CORP., a Delaware Corp.; Marybeth

Peters, Register of Copyrights, Defendants-Appellees.

No. 97-55947.

United States Court of Appeals, Ninth Circuit.

Argued and Submitted Aug. 5, 1998.

Decided Nov. 5, 1998.

Bonnie E. Eskenazi, Greenberg, Glusker, Fields, Claman & Machtinger, Los Angeles, California, for the plaintiff-appellant.

Helene M. Freeman, Dorsey & Whitney, New York City, for the defendant-appellee.

David O. Carson, General Counsel, U.S. Copyright Office, and Alfred Mollin, United States Department of Justice, Washington, DC, for the intervenor, defendant-appellee.

Appeal from the United States District Court for the Central District of California Dean D. Pregerson, District Judge, Presiding. D.C. No. CV-96-07416 DDP.

Before: FLETCHER, THOMPSON and LEAVY, Circuit Judges.

FLETCHER, Circuit Judge:

Batjac Productions Inc. ("Batjac") appeals the district court's grant of summary judgment to defendant GoodTimes Home Video Corp. ("GoodTimes") and intervenor Marybeth Peters, Register of Copyrights ("Register").

The district court denied Batjac's claim that GoodTimes violated its copyright in the screenplay "McLintock!" and that the Register had an obligation to register the copyright of the screenplay. The district court held that the publication of the motion picture, "McLintock!," effected the publication of the unpublished screenplay to the extent that the screenplay was incorporated into the film.

This case primarily turns upon whether § 7 of the Copyright Act of 1909, 17 U.S.C. § 1 et seq. (repealed effective 1978) ("1909 Act"), affords protection to intellectual properties that have "common law copyrights," ¹ or protects only federal statutory copyrights. We hold that the language of § 7 does not apply to common law copyrights.

We agree with the reasoning of Classic Film Museum, Inc. v. Warner Bros., Inc., 597 F.2d 13 (1st Cir.1979), that a common law copyright in the underlying screenplay does not survive the motion picture's loss of copyright and falls into the public domain due to a failure to renew the movie's copyright. The judgment of the district court is AFFIRMED.

BACKGROUND

In 1962, James Edward Grant wrote an original screenplay entitled "McLintock!". Almost immediately, he assigned to Batjac all of his rights in the screenplay, including "all draft versions and adaptations," with the "unqualified right to use said work, in whole or in part, in whatever manner [Batjac] may desire." Batjac was expressly granted all rights to obtain copyrights and to renew and extend those copyrights.

Batjac created the motion picture, "McLintock!," from the screenplay. The picture was released to the general public on November 1, 1963. The motion picture was registered for federal statutory copyright in 1963. Also in 1963, Batjac published a book and a comic book based on the screenplay. Both were registered for copyright. ²

The copyright registration for the motion picture lapsed and McLintock! fell into the public domain in 1991 when it was not renewed. In 1993, GoodTimes began producing and selling videocassettes of McLintock!. In January 1996, pursuant to 17 U.S.C. § 411(a), Batjac applied to register for copyright two intermediate drafts of the screenplay as "unpublished" works. The original September 17, 1962 version of the screenplay was not submitted.

On February 23, 1996, Batjac commenced an action against GoodTimes in the United States District Court for the Southern District of New York alleging infringement of the copyright in both intermediate drafts of the screenplay.

On March 28, 1996, the Copyright Office declined to register the portions of the screenplays contained in the motion picture, now in the public domain. It determined that the release of the motion picture published the motion picture and all components of the motion picture, including the screenplay. The Register intervened in this action pursuant to 17 U.S.C. § 411(a) to defend its determination that the screenplays were in the public domain to the extent that they were incorporated into the motion picture.

The action was transferred to the Central District of California to consolidate with a previously filed action, Maljack Productions, Inc. v. UAV Corp., D.C. Case No. 96-0749 DDP VAPx (the "UAV action"), raising the identical issue. The district court consolidated the case against GoodTimes with the UAV action but only for purposes of deciding the

issue of registrability for copyright of the two draft screenplays. All parties moved for summary judgment. The district court in a published opinion granted the Register's and GoodTimes' cross-motions for summary judgment holding that the Register correctly refused to register the draft McLintock! screenplays because the screenplays had secured statutory copyright with the motion picture and had passed into the public domain when the copyright was not renewed. See Maljack Prods., Inc. v. UAV Corp., 964 F.Supp. 1416, 1419 (C.D.Cal.1997).

STANDARD OF REVIEW

We review de novo grants of summary judgment. Bagdadi v. Nazar, 84 F.3d 1194, 1197 (9th Cir.1996). In reviewing the grant of summary judgment, we "must determine, viewing evidence in the light most favorable to the nonmoving party, whether genuine issues of material fact exist and whether the district court correctly applied the relevant substantive law." Id.

ANALYSIS

The question put to us is whether the district court correctly held that the publication of the motion picture, McLintock!, published the incorporated portions of the pre-existing, unpublished screenplay. This turns on the interpretation of § 7 of the 1909 Act. If the screenplay remained unpublished during the period 1963 to 1978 as Batjac contends, then it would have gained statutory protection in 1978 under the Copyright Act of 1976, 17 U.S.C. § 101 et seq. ("1976 Act"), and would still be protected today. ³ If however, publication of the movie also published the incorporated portions of the screenplay, then those portions of the screenplay entered the public domain in 1991 along with the motion picture. Batjac argues that the district court's holding violates § 7 of the 1909 Act which protects the copyright of pre-existing works from destruction by publication of derivative works.

Overview

Batjac secured copyright for McLintock! under the 1909 Act. The 1909 Act recognizes that both federal and state law provide copyright protection. See 1 Nimmer § 2.02. Unpublished works were protected by state common law or statute, while published works were protected by federal statute. Id. State "common law" protection attached upon creation of the work and ended with publication of the work. Once published, the only protection available was federal statutory copyright. Publication of a work with proper notice secured the statutory copyright. 17 U.S.C. § 10 (repealed). Statutory copyright provided an initial 28 year term of protection and a 28 year renewal term. § 24 (repealed). To get the renewal term protection, copyright owners had to apply for renewal.

The 1976 Act eliminated common law protection. Under the 1976 Act, unpublished works lost their common law protection but gained statutory protection. The statutory protection for works created but unpublished as of January 1, 1978 endures until 50 years after the authors death or until the year 2002, whichever is longer. § 303. The renewal term for works with subsisting copyrights as of the implementation date for the 1976 Act, January 1, 1978, was lengthened to 47 years but the requirement that copyright owners must apply for renewal was left in place. ⁴

Batjac failed to renew the motion picture's copyright in 1991 and now seeks to maintain control of the film by asserting Batjac's rights as copyright holder of the underlying screenplay. Batjac's argument is that the publication of the motion picture did not affect the common law copyright protection over its pre-existing, unpublished screenplay. ⁵ Rather, Batjac argues that its common law rights were protected by § 7 of the 1909 Act which protects subsisting copyrights against loss that otherwise could occur from the publication of derivative works.

The district court disagreed. It found that publication of the motion picture also published the screenplay. It relied on an opinion of the First Circuit, Classic Film Museum, Inc. v. Warner Bros., Inc., 597 F.2d 13 (1st Cir.1979). The district court rejected the notion that the 1909 Act extended § 7 protection to common law copyrights. Further, it rejected the claim that the Supreme Court decision in Stewart v. Abend, 495 U.S. 207, 110 S.Ct. 1750, 109 L.Ed.2d 184 (1990), applied to common law copyrights. Batjac contends that the district court erred in its analysis of § 7 and Abend.

Section 7

of the 1909 Act

A. The Meaning of § 7 Under the 1909 Act

Section 7 provides that the publication of a derivative work does not affect the validity of a subsisting copyright in the preexisting work. Whether the term "subsisting copyright" in § 7 means "statutory copyright" or "statutory and common law copyright" is critical to our inquiry. In pertinent part, Section 7 provides:

Compilations or abridgements, adaptations, arrangements, dramatizations, translations, or other versions of works in the public domain or of copyrighted works when produced with the consent of the proprietor of the copyright in such works, or works republished with new matter, [i.e., derivative works] shall be regarded as new works subject to copyright under the provisions of this title; but the publication of any such new work shall not affect the force or validity of any subsisting copyright upon the matter employed or any part thereof, or be construed to imply an exclusive right to such use of the original works, or...