Meta-Film Associates, Inc. v. MCA, Inc.

• Decision Date: 14 May 1984
• Docket Number: CV 79-3811 MRP.,No. CV 79-1272 MRP,CV 79-1272 MRP
• Citation: 586 F. Supp. 1346
• Parties: META-FILM ASSOCIATES, INC., Plaintiff, v. MCA, INC., et al., Defendants. META-FILM ASSOCIATES, INC., Plaintiff, v. 21ST CENTURY COMMUNICATIONS, INC., et al., Defendants.
• Court: U.S. District Court — Central District of California

586 F. Supp. 1346

META-FILM ASSOCIATES, INC., Plaintiff, v. MCA, INC., et al., Defendants.

META-FILM ASSOCIATES, INC., Plaintiff, v. 21ST CENTURY COMMUNICATIONS, INC., et al., Defendants.

Nos. CV 79-1272 MRP, CV 79-3811 MRP.

United States District Court, C.D. California.

May 14, 1984.

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James P. Tierney, P.C., Santa Monica, Cal., for plaintiff.

Louis P. Petrich, Youngman, Hungate & Leopold, Los Angeles, Cal., for defendants MCA, Universal, ABC, Simmons, Reitman, Ramis, Miller & Stumpf as Executor of the Estate of Douglas Kenney.

Jonathan David Rapore, Los Angeles, Cal., for defendants Yearbook Movie Co., 21st Century Communications, Inc., Nat. Lampoon Inc., National Lampoon Players, Inc., and Ivan Reitman Enterprises, Inc.

OPINION

PFAELZER, District Judge.

Defendants' motions for partial summary judgment and for orders specifying that certain material facts are without substantial controversy came on for hearing on January 16, 1984. The court, having considered the papers filed and oral arguments made, now files this Opinion, which shall constitute its Findings of Fact and Conclusions of Law.

I. BACKGROUND

The motion picture "Animal House", a satire on college fraternity life, was filmed in late 1977, from a screenplay developed from a 110 page treatment (the "Treatment"), which was written under the auspices of defendant National Lampoon Incorporated. It was released by defendant Universal City Studios, Inc., ("Universal") to the general public in the summer of 1978. The picture was a commercial success, grossing, according to the plaintiff's complaint, over $60,000,000 in film rentals. The success of Animal House led defendants MCA, Inc. (the parent corporation of Universal) and the American Broadcasting Corporation, Inc. ("ABC") to produce a television series as a sequel to the film. The pilot episode of this television series, which was entitled Delta House, was broadcast on January 28, 1979.

Plaintiff Meta-Film Associates, Inc. is the assignee of the rights in an unpublished screenplay entitled "Frat Rats". Plaintiff, asserting that Animal House and the Delta House television series were copied from Frat Rats, instituted this action in 1979. A First Amended Complaint, filed in February 1980, contains four counts: a first count for federal copyright infringement and unfair competition; a second count for common law copyright infringement; a third count for breach of confidence; and a fourth count for breach of contract. On August 15, 1983, the parties filed a stipulation dismissing, with prejudice, plaintiff's third count for breach of confidence, its fourth count for breach of contract, and all claims in its first count which relate to episodes of the Delta House television series other than the pilot episode.

The defendants then filed an array of motions attacking plaintiff's remaining claims. Two of these motions seek an order specifying, pursuant to Rule 56(d) of the Federal Rules of Civil Procedure, that certain material facts are without substantial controversy. First, defendants seek an order that plaintiff has standing to sue for infringement of the Frat Rats copyright only as to the original material contributed by William Kerby and not as to the underlying material written by James Hart. Second, defendants seek an order specifying that the creators of the Treatment had no access to the Frat Rats screenplay prior to submitting the Treatment to Universal. In a third motion, the defendants seek partial summary judgment as to plaintiff's claim for copyright infringement on the ground that plaintiff did not, as required by § 205(d) of the Copyright Act of 1976, register the assignments by which it obtained rights in the Frat Rats copyright prior to instituting this litigation. In a fourth motion, defendants seek partial summary judgment with respect to plaintiff's claim for unfair competition and common law copyright infringement.¹

II. DISCUSSION

A. Standing

Frat Rats is comprised of four separate drafts, which were written between 1975 and 1977. The first draft was completed by James Hart in or about December 1975. The second draft, a rewrite of the first, was completed by Hart on or about April 12, 1976. The third draft, a revision of the preceding two drafts, was prepared by William Kerby and completed in or about March of 1977. The final draft, also prepared by Kerby, was completed in or about May of 1977.

The defendants argue that plaintiff is the assignee of only the rights to the third and fourth drafts (the "Kerby drafts"). They contend that Hart never assigned his rights in the first two drafts (the "Hart drafts") to plaintiff, and, as a consequence, that plaintiff has standing to sue for infringement of the Frat Rats copyright only as to the material added by Kerby. In reply, plaintiff asserts that it acquired its rights to Frat Rats through two assignments from James Hart. The rights to the Kerby drafts were initially held by Hart, who acquired them through a "Loanout Agreement", dated December 29, 1976, between Hart and "The New Glory", Kerby's loanout company. In an "Assignment and Assumption Agreement" dated June 24, 1977, Hart transferred his rights in the Kerby drafts to plaintiff.

Defendants do not contest the validity of the assignment to plaintiff of the rights to the Kerby drafts; rather, as stated, they challenge the plaintiff's rights in the Hart drafts. At the time they filed this motion, defendants had never been provided with a signed copy of an assignment to plaintiff of the rights in the Hart drafts. However, in an exhibit attached to its December 22, 1983 memorandum in opposition to this motion, plaintiff, for the first time, provided an executed copy of an assignment ("the Hart assignment") dated June 24, 1977, in which Hart appears to have assigned all his rights in Frat Rats to plaintiff. Based on this assignment of the rights in the Hart drafts, defendants' motion on this ground must be denied at this time.

Defendants question the authenticity of the Hart assignment and request an extension of the discovery cut-off date to allow them to conduct discovery with respect to this particular document. Although plaintiff's explanation for its failure to provide defendants with an executed copy of the Hart assignment earlier in these proceedings appears reasonable, the court finds it appropriate to grant defendants' request. Therefore, the court will allow defendants to conduct discovery for the sole purpose of testing the authenticity of the Hart assignment. If, in the course of this discovery, defendants ascertain facts which call into question the validity of the Hart assignment, they may renew this motion challenging plaintiff's standing.

B. Recordation Requirement

Paragraph 9 of the first amended complaint states, in part, that "plaintiff has complied in all respects with the copyright laws of the United States ..." In this motion, defendants attack this allegation. They contend that plaintiff's failure to record the assignment from Hart to it of the rights to the Kerby drafts (i.e., the third and fourth drafts) prior to commencing this litigation violates the recordation requirement of Section 205(d) of the Copyright Act of 1976. As a consequence, defendants argue, this court lacks jurisdiction over plaintiff's copyright claim concerning the Kerby drafts. Plaintiff asserts that the copyright laws do not require such a recordation, and, in any event, that its subsequent recordation of the assignment cures any defect that may have existed. Since plaintiff's second argument is dispositive of this motion, the court finds it unnecessary to address plaintiff's first argument.

The second argument turns on the construction of 17 U.S.C. § 205(d), which provides that,

no person claiming by virtue of a transfer to be the owner of copyright or of any exclusive right under a copyright is entitled to institute an infringement action under this title until the instrument of transfer under which such person claims has been recorded in the Copyright Office, but suit may be instituted after such recordation on a cause of action that arose before recordation.

As noted above, plaintiff acquired its rights to the Frat Rats screenplay through two written assignments from James Hart. Plaintiff, however, did not file either assignment with the Copyright Office prior to instituting this litigation; in fact, plaintiff did not do so until December 22, 1983, after having been served with this motion. Therefore, the question is whether this late filing deprives the court of jurisdiction. The court is persuaded that it does not.

The literal language of § 205(d) does suggest that recordation is a condition precedent to institution of suit. However, the courts have not strictly construed the filing requirements of the Copyright Act. In Roth Greeting Cards v. United Card Co., 429 F.2d 1106 (9th Cir.1970), the Ninth Circuit refused to interpret another of the Copyright Act's registration requirements as depriving the court of jurisdiction. The section involved in that case was § 13 of the Copyright Act of 1909, 17 U.S.C. § 13,² which provided that "no action or proceeding shall be maintained for infringement ... until the provision of this title with respect to the ... registration of such work shall have been complied with." The Ninth Circuit stated that, even if the term "maintained" meant "begun", the plaintiff's failure to register his work before filing suit was not fatal to the action; the court held that since the pretrial conference order was filed after the registration of plaintiff's work, and since the order, by its terms, "supplemented the pleadings", id. at 1109, no bar to federal court jurisdiction existed. In Co-Opportunities v. National Broadcasting Co., 510 F.Supp. 43 (N.D. Cal.1981), the court extended Roth's liberality towards late filing to § 205(d). In that case, prior to filing the action, the plaintiff...