Christian v. Mattel, Inc.
| Decision Date | 15 April 2002 |
| Docket Number | No. 00-56579.,No. 00-56194.,00-56194.,00-56579. |
| Citation | 286 F.3d 1118 |
| Parties | Harry R. CHRISTIAN, Plaintiff, v. MATTEL, INC., a corporation; Claudene Christian; Collegiate Doll Company, a sole proprietorship, Defendants-Appellees, James B. Hicks, Esq., Real-party-in-interest-Appellant. James B. Hicks, Esq., Appellant, and Harry R. Christian, an individual, Plaintiff-counter-defendant, v. Mattel, Inc., a corporation, Defendant-cross-claimant-Appellee. |
| Court | U.S. Court of Appeals — Ninth Circuit |
Kent L. Richland and Jessica M. Weisel, Greines, Martin, Stein & Richland LLP, Beverly Hills, CA, for the real-party-in-interest-appellant.
Adrian Mary Pruetz, Quinn Emanuel Urquhart Oliver & Hedges, LLP, Los Angeles, CA, for the defendant-appellee.
Appeal from the United States District Court for the Central District of California; Nora M. Manella, District Judge, Presiding. D.C. No. CV-99-02820-NM.
Before: SCHROEDER, Chief Judge, McKEOWN, Circuit Judge, and ZILLY,* District Judge.
It is difficult to imagine that the Barbie doll, so perfect in her sculpture and presentation, and so comfortable in every setting, from "California girl" to "Chief Executive Officer Barbie," could spawn such acrimonious litigation and such egregious conduct on the part of her challenger. In her wildest dreams, Barbie could not have imagined herself in the middle of Rule 11 proceedings. But the intersection of copyrights on Barbie sculptures and the scope of Rule 11 is precisely what defines this case.
James Hicks appeals from a district court order requiring him, pursuant to Federal Rule of Civil Procedure 11, to pay Mattel, Inc. $501,565 in attorneys' fees that it incurred in defending against what the district court determined to be a frivolous action. Hicks brought suit on behalf of Harry Christian, claiming that Mattel's Barbie dolls infringed Christian's Claudene doll sculpture copyright. In its sanctions orders, the district court found that Hicks should have discovered prior to commencing the civil action that Mattel's dolls could not have infringed Christian's copyright because, among other things, the Mattel dolls had been created well prior to the Claudene doll and the Mattel dolls had clearly visible copyright notices on their heads. After determining that Hicks had behaved "boorishly" during discovery and had a lengthy rap sheet of prior litigation misconduct, the district court imposed sanctions.
We hold that the district court did not abuse its discretion in determining that the complaint filed by Hicks was frivolous under Rule 11. In parsing the language of the district court's sanctions orders, however, we cannot determine with any degree of certainty whether the district court grounded its Rule 11 decision on Hicks' misconduct that occurred outside the pleadings, such as in oral argument, at a meeting of counsel, and at a key deposition. This is an important distinction because Rule 11 sanctions are limited to misconduct regarding signed pleadings, motions, and other filings. Fed.R.Civ.P. 11. Consequently, we vacate the district court's orders and remand for further proceedings consistent with this opinion. In so doing, we do not condone Hicks' conduct or suggest that the district court did not have a firm basis for awarding sanctions. Indeed, the district court undertook a careful and exhaustive examination of the facts and the legal underpinnings of the copyright challenge. Rather, the remand is to assure that any Rule 11 sanctions are grounded in conduct covered by Rule 11 and to ensure adequate findings for the sizeable fee award.
As context for examining the district court's determination that the underlying copyright action was frivolous, we begin by discussing the long history of litigation between Mattel and Hicks' past and current clients: Harry Christian; Christian's daughter, Claudene; and the Collegiate Doll Company ("CDC"), Claudene's proprietorship.
Mattel is a toy company that is perhaps best recognized as the manufacturer of the world-famous Barbie doll. Since Barbie's creation in 1959, Mattel has outfitted her in fashions and accessories that have evolved over time. In perhaps the most classic embodiment, Barbie is depicted as a slender-figured doll with long blonde hair and blue eyes. Mattel has sought to protect its intellectual property by registering various Barbie-related copyrights, including copyrights protecting the doll's head sculpture. Mattel has vigorously litigated against putative infringers.
In 1990, Claudene Christian, then an undergraduate student at the University of Southern California ("USC"), decided to create and market a collegiate cheerleader doll. The doll, which the parties refer to throughout their papers as "Claudene," had blonde hair and blue eyes and was outfitted to resemble a USC cheerleader.
Mattel soon learned about the Claudene doll. After concluding that it infringed certain Barbie copyrights, Mattel brought an administrative action before the United States Customs Service in 1996 in which it alleged that the Claudene doll, manufactured abroad, had pirated the head sculpture of the "Teen Talk" and "SuperStar" Barbies. The Customs Service ruled in CDC's favor and subsequently released a shipment of Claudene dolls.1 Undaunted, Mattel commenced a federal court action in 1997 in which it once again alleged that CDC infringed various of Mattel's copyrights. At the time, Claudene Christian was president of CDC and Harry Christian was listed as co-founder of the company and chief financial officer. CDC retained Hicks as its counsel. After the court dismissed CDC's multiple counterclaims, the case was settled. Mattel released CDC from any copyright infringement liability in exchange for, among other things, a stipulation that Mattel was free to challenge CDC's alleged copyright of the Claudene doll should CDC "or any successor in interest" challenge Mattel's right to market its Barbie dolls.
Seizing on a loophole in the parties' settlement agreement, within weeks of the agreement, Harry Christian, who was not a signatory to the agreement, retained Hicks as his counsel and filed a federal court action against Mattel. In the complaint, which Hicks signed, Christian alleged that Mattel obtained a copy of the copyrighted Claudene doll in 1996, the year of its creation,2 and then infringed its overall appearance, including its face paint, by developing a new Barbie line called "Cool Blue" that was substantially similar to Claudene. Christian sought damages in the amount of $2.4 billion and various forms of injunctive relief. In an apparent effort to demonstrate that the action was not a sham, Claudene Christian and CDC were also named as defendants. Subsequently, Hicks alleged in a letter to Mattel's counsel that an additional doll called "Virginia Tech University Barbie" also infringed the Claudene doll copyright. Hicks, however, never amended the complaint to plead allegations about Virginia Tech Barbie.
Two months after the complaint was filed, Mattel moved for summary judgment. In support of its motion, Mattel proffered evidence that the Cool Blue Barbie doll contained a 1991 copyright notice on the back of its head, indicating that it predated Claudene's head sculpture copyright by approximately six years.3 Mattel therefore argued that Cool Blue Barbie could not as a matter of law infringe Claudene's head sculpture copyright. Mattel similarly contended that the copyright on the Virginia Tech Barbie's head sculpture also significantly predated the purported copyright on the Claudene head sculpture. Virginia Tech Barbie and other Barbie dolls contained a head sculpture that was copyrighted in 1976 and originally appeared on SuperStar Barbie.
At a follow-up counsel meeting required by a local rule, Mattel's counsel attempted to convince Hicks that his complaint was frivolous. During the videotaped meeting, they presented Hicks with copies of various Barbie dolls that not only had been created prior to 1996 (the date of Claudene's creation), but also had copyright designations on their heads that pre-dated Claudene's creation. Additionally, Mattel's counsel noted that the face paint on some of the earlier-created Barbie dolls was virtually identical to that used on Claudene. Hicks declined Mattel's invitation to inspect the dolls and, later during the meeting, hurled them in disgust from a conference table.
Having been unsuccessful in convincing Hicks to dismiss Christian's action voluntarily, Mattel served Hicks with a motion for Rule 11 sanctions. In its motion papers, Mattel argued, among other things, that Hicks had signed and filed a frivolous complaint based on a legally meritless theory that Mattel's prior-created head sculptures infringed Claudene's 1997 copyright. Hicks declined to withdraw the complaint during the 21-day safe harbor period provided by Rule 11, and Mattel filed its motion.
Seemingly unfazed by Mattel's Rule 11 motion, Hicks proceeded with the litigation and filed a motion pursuant to Federal Rule of Civil Procedure 56(f) to obtain additional discovery. In particular, he sought information regarding the face painting on certain Barbie dolls and the face paint/head sculpture combinations used by Mattel after 1996. The district court summarily denied the motion. It later noted, in the context of its summary judgment order, that "it is unclear what [Christian] is requesting when he seeks access to post-1996 Barbies."
Hicks then began filing additional papers that were characterized by frequency and volume. Following official completion of the summary judgment briefing schedule, Hicks filed what was styled as a "supplemental opposition." In those papers, Christian asserted for the first time that the head sculpture of Mattel's CEO Barbie (which was created...
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