Rano v. Sipa Press, Inc.

• Decision Date: 24 March 1993
• Docket Number: No. 91-55080,91-55080
• Citation: 987 F.2d 580
• Parties: 1993 Copr.L.Dec. P 27,067, 26 U.S.P.Q.2d 1051 Kip RANO, Plaintiff-Appellant, v. SIPA PRESS, INC., Sipa, Inc., Goskin Sipahioglu, Sipa, Defendants-Appellees.
• Court: U.S. Court of Appeals — Ninth Circuit

Page 580

987 F.2d 580

1993 Copr.L.Dec. P 27,067, 26 U.S.P.Q.2d 1051

Kip RANO, Plaintiff-Appellant, v. SIPA PRESS, INC., Sipa, Inc., Goskin Sipahioglu, Sipa Defendants-Appellees.

No. 91-55080.

United States Court of Appeals Ninth Circuit.

Argued and Submitted Feb. 4, 1992.

Decided March 2, 1993.

As Amended March 24, 1993.

J.D. Sullivan, Pasadena, CA, for plaintiff-appellant.

Kevin J. Stack, Knapp, Petersen & Clarke, Glendale, CA, and Ben C. Friedman, Baker & Friedman, New York City, for defendants-appellees.

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

Before: BRUNETTI, O'SCANNLAIN, and T.G. NELSON, Circuit Judges.

BRUNETTI, Circuit Judge:

OVERVIEW

This appeal from a dismissal for lack of personal jurisdiction and grant of summary judgment in a copyright infringement suit turns on issues of federal preemption of state law in the copyright field and the termination of copyright licenses. For the reasons stated below, we affirm in part, reverse in part, and remand.

FACTS AND PROCEEDINGS BELOW

The parties to this appeal include: Plaintiff-Appellant Kip Rano, a professional photographer and citizen of Great Britain who resides and has his principal place of business in California; and Defendants-Appellees Sipa Press, a French corporation, Sipa Press, Inc., a Delaware subsidiary corporation, and Sipa, Inc., a New York subsidiary corporation (collectively Sipa), and Goskin Sipahioglu, President and one of three owners of Sipa Press. Sipa is a photograph distribution syndicate.

In France, on or before 1978, the parties entered into an oral copyright license agreement whereby Rano granted to Sipa a non-exclusive license of unspecified duration to reproduce, distribute, sell, and authorize others to reproduce, distribute, and sell his photographs. In return, Sipa agreed to store and develop the negatives and to pay fifty percent of the net royalties generated from its sales and distributions.

The relationship went smoothly for about eight years. Pursuant to agreement, Rano submitted several thousand of his photographs to Sipa, which Sipa distributed and paid royalties for. In March of 1986, however, Rano sent a letter to Sipahioglu informing him that he was changing agencies and that he would no longer be sending his negatives to Sipa. He gave as his reasons Sipa's failure to timely pay royalties, low sales, poor photography assignments, and unwillingness to reimburse certain expenses. Starting in July of 1986, Rano made several requests that Sipa return all of the negatives he had sent to them. Finally, on March 12, 1987, Rano informed Sipahioglu that he "did not authorize Sipa to sell any more of [his] photographs."

In July of 1989, Rano sued Sipa and Sipahioglu alleging that Sipa infringed his copyright by: (1) failing to credit him for a photograph of the Duchess of York, the former Sara Ferguson; (2) failing to pay certain royalties; (3) continuing to distribute some of his photographs after he demanded their return and after he had attempted to terminate their licensing agreement; (4) failing to return some of his photographs upon demand; and (5) placing defective copyright notices on slide mounts for his photographs. Rano also alleged state breach of contract, intentional interference with economic relationship, and malicious conversion claims. As a remedy for the copyright infringement claims, Rano sought an injunction against Sipa's further use of his photographs, the delivery of the photographs for impoundment, a declaratory judgment as to the rights to his photographs, compensatory and punitive damages, and costs of the suit and attorney's fees.

The district court dismissed Rano's pendent claims for malicious conversion and intentional interference with economic relationship and granted defendant Sipahioglu's motion to dismiss for lack of personal jurisdiction. After reviewing the affidavits and memoranda submitted by the parties and conducting a hearing, the district court granted Sipa's motion for summary judgment, holding that all but one of Rano's

                copyright infringement claims did not constitute copyright claims under the Copyright Act, but were merely breach of contract claims.   The one claim that did allege copyright infringement--failure to affix a proper copyright notice--was, as a matter of law, meritless because the notice Sipa did provide was adequate to protect his copyright.   The district court dismissed the remaining pendent state claims for lack of subject matter jurisdiction
                

DISCUSSION

I. Jurisdiction in the District Court.

The district court had subject matter jurisdiction over Rano's action under 28 U.S.C. § 1338(a) because the suit "arises under" federal copyright law. ¹ A mere allegation of breach of contract does not create federal jurisdiction, even if the contract involves copyright. Under the well-pleaded complaint rule,

an action arises under the federal copyright laws "if and only if the complaint is for a remedy expressly granted by the Act, ... or asserts a claim requiring construction of the Act, ... or at the very least and perhaps more doubtfully presents a case where a distinctive policy of the Act requires that federal principles control the disposition of the claim."

Vestron Inc. v. Home Box Office, 839 F.2d 1380, 1381 (9th Cir.1988) (quoting T.B. Harms Co. v. Eliscu, 339 F.2d 823 (2d Cir.1964) (Friendly, J.), cert. denied, 381 U.S. 915, 85 S.Ct. 1534, 14 L.Ed.2d 435 (1965)).

In this case, Rano is seeking remedies under several sections of the Copyright Act: 17 U.S.C. §§ 502 (injunctive relief), 503 (impoundment), 504 (damages and profits), and 505 (attorney's fees and costs). Thus, federal jurisdiction is proper.

II. Jurisdiction Over The Appeal.

Although Rano filed his notice of appeal based on the district court's summary judgment order, more than two weeks before the district court issued its final order dismissing the remaining pendent state claims, we will treat the notice of appeal as timely. See Eastport Assocs. v. City of Los Angeles, 935 F.2d 1071, 1074 (9th Cir.1991) (premature notice of appeal will be directed towards a subsequently entered final decision dismissing the action); Anderson v. Allstate Ins. Co., 630 F.2d 677, 680-681 (9th Cir.1980) (subsequent events can validate a prematurely filed appeal). As in Eastport and Anderson, there is no danger of piecemeal review because no issue or claim remains in the district court. Accordingly, we have jurisdiction over this appeal pursuant to 28 U.S.C. § 1291 (1982).

III. Standard of Review.

We review grants of summary judgment de novo. S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081, 1083 (9th Cir.1989). We must determine, viewing the evidence in the light most favorable to the nonmoving party, whether there are any genuine issues of material fact and whether the district court correctly applied the relevant substantive law. Id. We are free to affirm on any ground fairly presented by the record. Jackson v. Southern Cal. Gas Co., 881 F.2d 638, 643 (9th Cir.1989).

IV. Allegations of Copyright Infringement.

Rano alleges infringement of two of the rights granted to him, as creator of the photographs, by the Copyright Act: the right to reproduce the copyrighted work in copies and the right to distribute copies of the work to the public by sale or other transfer of ownership. See 17 U.S.C. § 106(1) and (3). Rano concedes that, under normal circumstances, his licensing It is undisputed that the licensing agreement did not contain any provision, either express or implied, regarding its duration. Rano relies on two theories to prove that he properly terminated the agreement. First, Rano argues that California law provides for termination at will of a contract of unspecified duration. Thus, when he wrote Sipahioglu on March 12, 1987, and informed him of his intent to use a different photograph distributor, he terminated their licensing agreement. Second, Rano argues that California law provides for the termination of a contract upon the material breach of the contract by the other party, and that Sipa's alleged actions constituted material breaches of the licensing agreement, permitting him to terminate the agreement.

                agreement with Sipa would provide Sipa with a valid defense against his copyright infringement claim.   See Effects Assocs., Inc. v. Cohen, 908 F.2d 555, 559 (9th Cir.1990), cert. denied sub nom., Danforth v. Cohen, --- U.S. ----, 111 S.Ct. 1003, 112 L.Ed.2d 1086 (1991) (in granting a copyright license, the licensor gives up its right to sue the licensee for infringement);  Oddo v. Ries, 743 F.2d 630 n. 6 (9th Cir.1984) (license is a defense to infringement and must be affirmatively pleaded).   Rano argues, however, that although he and Sipa did at one time have a copyright agreement, he terminated the agreement with Sipa.   He claims that the termination deprived Sipa of its right to use the negatives Rano already had sent to Sipa, and that Sipa's subsequent use of Rano's negatives constituted copyright infringement.
                

Sipa counters that the express provision in the Copyright Act regarding termination rights, 17 U.S.C. § 203, preempts state law and prevents Rano from terminating their license agreement until thirty-five years have elapsed. Thus, Sipa claims, its alleged acts of reproducing and distributing Rano's photographs remained licensed at all times and did not constitute copyright infringement.

A. Termination at Will. ²

Under California contract law, agreements of non-specified duration are terminable at the will of either party. Zimco Restaurants, Inc. v. Bartenders and Culinary Workers' Union, Local 340, 165 Cal.App.2d 235, 331 P.2d 789, 792-92 (1958); but cf. Foley v. Interactive Data Corp., 47 Cal.3d 654, 254 Cal.Rptr. 211, 765 P.2d 373, 385-86 (1988) (noting that this general rule increasingly has given way to courts' willingness to "gap fill" a reasonable duration). Rano argues that the non-exclusive licensing agreement was a...