Peter Starr Production Co. v. Twin Continental Films, Inc.

Decision Date04 March 1986
Docket NumberNo. 85-5693,85-5693
Citation783 F.2d 1440
Parties, 1986 Copr.L.Dec. P 25,907 PETER STARR PRODUCTION CO., Plaintiff-Appellant, v. TWIN CONTINENTAL FILMS, INC. and Gautam Das, Defendants-Appellees.
CourtU.S. Court of Appeals — Ninth Circuit

Stephen R. Rohde, Paul S. Levine, Law Office of Stephen F. Rohde, Los Angeles, Cal., for plaintiff-appellant.

David Gardner, Los Angeles, Cal., for defendants-appellees.

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

Before ANDERSON, PREGERSON, and WIGGINS, Circuit Judges.

WIGGINS, Circuit Judge.

Appellant Peter Starr Production Co. ("Starr") appeals from the judgment of the district court dismissing its copyright infringement action against Twin Continental Films, Inc. ("Twin") and Gautam Das, its manager, for lack of subject matter jurisdiction under 28 U.S.C. Sec. 1338(a) (1982). Starr contends that the district court erred in concluding as a matter of law that Twin committed no act in the United States that violates United States copyright law and abused its discretion in dismissing the complaint without leave to amend. We reverse and remand.


Starr created an original motion picture entitled "Take It to the Limit" ("the motion picture"). The motion picture and its soundtrack were properly copyrighted on July 10, 1980, and Starr has since that time complied with the Copyright Act in preserving that copyright for itself.

In May of 1983, Starr authorized Roger Riddell, a business acquaintance and agent, to "explore the possibility" of finding European distributors for a number of films including "Take It to the Limit," but specifically told him that he had no authority to bind Starr. By late June, Riddell obtained several offers for the rights to the motion picture from Alpha Films Limited ("Alpha"), but Starr rejected all of them.

On or about June 10, 1983, without authority from Starr, Twin entered into a license agreement with Alpha purporting to grant to Alpha "the exclusive license to exhibit" the motion picture in certain areas outside the United States. The license agreement was negotiated in Cannes, France, but notes on its face that it was signed in Los Angeles, California.

On August 3, Starr was shown a copy of the Twin-Alpha license agreement by an agent of Star Media Sales (no relation to Starr). Starr told the agent that Starr was not interested in dealing with Alpha and the agent informed Alpha of this.

On August 16, 1983, Alpha ordered and received a print of the motion picture from Rank Film Laboratories ("Rank"), the custodian of the motion picture's negative, in London, England. Alpha's representative assured Rank that it had a contract authorizing access with Star Media Sales, acting as an agent for Twin. Alpha subsequently reproduced the motion picture and distributed some 400 video cassettes of it in Sweden or the United Kingdom, or both.

Before February 17, 1984, through means not clear in the record, Alpha was told to and did stop distribution of the motion picture. As a result of the unauthorized distribution, however, another English distributor backed out of a pending distribution deal with Starr for the motion picture, causing a substantial loss to Starr.

On July 10, 1984, Starr filed the present action seeking damages and injunctive relief. Before answering the complaint, Twin moved for dismissal or in the alternative for summary judgment or for a more definite statement of facts. On February 7, 1985, the district court granted Twin's motion and dismissed the action for lack of subject matter jurisdiction. Starr timely appealed, and the case is properly before this court under 28 U.S.C. Sec. 1291 (1982). See also 28 U.S.C. Sec. 1295 (1982).


Subject matter jurisdiction presents a question of law, reviewable de novo by this court. Clayton v. Republic Airlines, Inc., 716 F.2d 729, 730 (9th Cir.1983). District court subject matter jurisdiction over copyright cases is grounded in 28 U.S.C. Sec. 1338(a), which provides in pertinent part:

The district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to ... copyrights.... Such jurisdiction shall be exclusive of the states in ... copyright cases.

The "Act of Congress relating to ... copyrights" is the Copyright Act of 1976, Pub.L. No. 94-553, 90 Stat. 2541 (1976), codified at Title 17 of the United States Code. Section 106 of that title, 17 U.S.C. Sec. 106 (1982), provides in relevant part:

[T]he owner of copyright under this title has the exclusive rights to do and to authorize any of the following:

(1) to reproduce the copyrighted work in copies or phonorecords;

(2) to prepare derivative works based on the copyrighted work;

(3) to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;

(4) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly; and

(5) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly. [emphasis added]

Section 501 of the Copyright title, 17 U.S.C. Sec. 501 (1982), provides in relevant part:

(a) Anyone who violates any of the exclusive rights of the copyright owner as provided by sections 106 through 118 ... is an infringer of the copyright.

(b) The legal or beneficial owner of an exclusive right under a copyright is entitled ... to institute an action for any infringement of any particular right committed while he or she is the owner of it.

In general, United States copyright laws do not have extraterritorial effect. See Robert Stigwood Group, Ltd. v. O'Reilly, 530 F.2d 1096, 1101 (2d Cir.), cert. denied, 429 U.S. 848, 97 S.Ct. 135, 50 L.Ed.2d 121 (1976). As a result, infringing actions that take place entirely outside the United States are not actionable in United States federal courts. Id.

In the present case, Starr's complaint alleges that Twin infringed Starr's copyright by authorizing Alpha to exhibit the motion picture without Starr's consent. In effect, the complaint contends that Twin's execution of the contract purporting to license Alpha to exhibit the motion picture constitutes "authorization" under Sec. 106. 2 This states a cause of action under the plain language of 17 U.S.C. Secs. 106 and 501, quoted above. As the Supreme Court has noted:

[A]n infringer is not merely one who uses a work without authorization by the copyright owner, but also one who authorizes the use of a copyrighted work without actual authority from the copyright owner.

Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417, 104 S.Ct. 774, 785 n. 17, 78 L.Ed.2d 574 (1984).

Starr's complaint also...

To continue reading

Request your trial
93 cases
  • Aurora World Inc. v. Ty Inc.
    • United States
    • U.S. District Court — Central District of California
    • December 15, 2009
    ...the United States are not actionable under the Copyright Act, it knew how to do so,” id. (quoting Peter Starr Production Co. v. Twin Continental Films, Inc., 783 F.2d 1440, 1442 (9th Cir.1986)). Animated by this consideration and concerned with international comity, the en banc court conclu......
  • SBK Catalogue Partnership v. Orion Pictures
    • United States
    • U.S. District Court — District of New Jersey
    • September 13, 1989
    ...of Amer. v. Universal City Studios, Inc., 464 U.S. at 435 n. 17, 104 S.Ct. at 785 n. 17; see also Peter Starr Prod. Co. v. Twin Continental Films, 783 F.2d 1440, 1443 (9th Cir.1986). The Partnership argues that the composers' conduct in purporting to cancel the publishing agreement assigned......
  • Gerritsen v. de la Madrid Hurtado
    • United States
    • U.S. Court of Appeals — Ninth Circuit
    • June 18, 1987
    ...Jurisdiction Whether subject matter jurisdiction exists is a question of law reviewable de novo. Peter Starr Prod. Co. v. Twin Continental Films, Inc., 783 F.2d 1440, 1442 (9th Cir.1986). The only statutory provision under which the complaint asserted subject matter jurisdiction is 28 U.S.C......
  • Sequoia Auto Brokers Ltd., Inc., In re
    • United States
    • U.S. Court of Appeals — Ninth Circuit
    • September 14, 1987
    ...raised by the appellate court on its own motion for the first time on appeal). Our review is de novo. Peter Starr Prod. Co. v. Twin Continental Films, 783 F.2d 1440, 1442 (9th Cir.1986). We consider first whether bankruptcy judges have an inherent authority to exercise the contempt power, a......
  • Request a trial to view additional results

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT