Rice v. Fox Broadcasting Co.

• Decision Date: 25 June 2001
• Docket Number: No. CV 99-10016 ABC (Ex).,CV 99-10016 ABC (Ex).
• Citation: 148 F.Supp.2d 1029
• Parties: Robert E. RICE, Plaintiff, v. FOX BROADCASTING COMPANY, et al., Defendants.
• Court: U.S. District Court — Central District of California

148 F.Supp.2d 1029

Robert E. RICE, Plaintiff, v. FOX BROADCASTING COMPANY, et al., Defendants.

No. CV 99-10016 ABC (Ex).

United States District Court, C.D. California.

June 25, 2001.

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

ORDER RE: DEFENDANTS' MOTIONS FOR SUMMARY ADJUDICATION OF CLAIMS PURSUANT TO FED R. CIV. PRO 56

COLLINS, District Judge.

Trying to protect what he claims is his exclusive right to make or present videos or television specials in which the secrets behind well-known magic tricks or illusions are revealed, Plaintiff has sued everyone associated with making and presenting a series of allegedly infringing television specials. Most of the remaining Defendants have now filed two summary judgment motions: (1) for Summary Adjudication Re: Plaintiff's Copyright Claims ("Copyright Motion"); and (2) for Summary Adjudication Re: Plaintiff's Lanham Act/California Business & Professions Code Section 17200 Claims ("Trademark/False Advertising Motion"). Both motions came on regularly for a hearing before this Court on June 18, 2001. For the reasons indicated below, the Court GRANTS the Copyright Motion, and GRANTS IN PART the Trademark/False Advertising Motion. The Court DISMISSES the First Claim for Relief.

I. PROCEDURAL HISTORY

On September 30, 1999, Plaintiff ROBERT E. RICE ("Plaintiff," or "Rice") filed the initial Complaint in this matter, naming a multitude of Defendants: FOX BROADCASTING COMPANY ("Fox Broadcasting Co."); FOX TELEVISION STATIONS, INC. ("Fox TV"); EARL GREENBURG PRODUCTIONS, INC. ("Greenburg Prod."); NASH ENTERTAINMENT, INC. ("Nash Entertainment"); SRJ PRODUCTIONS, INC. ("SRJ"); DLT ENTERTAINMENT LTD. ("DLT"); RIVE GAUCHE INTERNATIONAL TELEVISION ("Rive Gauche TV"); INTERNATIONAL CREATIVE MANAGEMENT, INC. ("ICM"); BRUCE NASH ("Nash"); DON WEINER ("Weiner"); EARL GREENBURG ("Greenburg"); RONALD GLAZER ("Glazer"); DAVID JOHN ("John"); MICHAEL LANCASTER ("Lancaster"); SCOTT MITCHELL ("Mitchell"); DAVID NEXT ("Next"); STEVE WOHL ("Wohl"); and LEONARD MONTANO a.k.a "Valentino" a.k.a. "The Masked Magician" ("Montano").

The Complaint asserts a claim of infringement under the Copyright Act (17 U.S.C. § 101 et seq.) against all Defendants (First Claim for Relief), a claim of false designation of origin/false statements under the Lanham Act (15 U.S.C. § 1125) against Defendants Fox Broadcasting Co., Fox TV, Greenburg Prod., Nash Entertainment, SRJ, Nash, Weiner, Greenburg, John, Lancaster, Mitchell, Next, and Montano (Second Claim for Relief), and a claim pursuant to the California Unfair Business Practices Act (Cal. Bus. & Prof.Code § 17200 et seq.) against all Defendants. See Complaint ¶¶ 54-71. The Complaint also includes four state-law claims which have since been dismissed (the Fourth through Seventh Claims for Relief), and claims for unjust enrichment (Eighth Claim for Relief), constructive trust (Ninth Claim for Relief), and an accounting (Tenth Claim for Relief), against all Defendants. All the state-law claims are brought pursuant to supplemental jurisdiction due to their alleged linkage to the federal claims. See id. ¶¶ 2, 72-102.

On April 17, 2000, Plaintiff and Defendant DLT filed, and this Court signed, a Stipulation and Order dismissing Defendant DLT from the action. This also disposed of the Sixth (for Breach of Written Contract) and Seventh (Breach of Fiduciary Duty) Claims for Relief, which were alleged only against Defendant DLT. A second Stipulation and Order filed and signed on November 22, 2000 dismissed the First (Copyright Act) and Fourth (Breach of Confidence) Claims for Relief as to Defendants ICM and Wohl. As these were the only Defendants against whom the Fourth Claim for Relief had been alleged, this also removed this claim from the action. The Court subsequently granted a motion for summary judgment filed by Defendants ICM and Wohl as to the claims which remained against them (the Third and Fifth Claims for Relief, and by extension the Eighth, Ninth and Tenth Claims for Relief). In that the Fifth Claim for Relief was alleged only against these two Defendants, that claim was also removed by the Court's January 17, 2001 grant of the previous ICM/Wohl motion for summary judgment.

Therefore, the only substantive claims remaining are the First, Second and Third Claims for Relief.¹ Nearly all of the Defendants that remain are included on the Copyright Motion and the Trademark/False Advertising Motion, both of which were filed on April 2, 2001. The Defendants represented on these Motions include Fox Broadcasting Co., Fox TV, Greenburg Prod., Nash Entertainment, SRJ, Rive Gauche TV, Nash, Weiner, Greenburg, Glazer, and Montano ("Moving Defendants").² These Motions were originally noticed to be heard on May 14, 2001.

The Copyright Motion seeks summary adjudication of Plaintiff's copyright infringement claim (the First Claim for Relief), on several alternative grounds. The Trademark/False Advertising Motion seeks summary adjudication of Plaintiff's Lanham Act claim(s) (Second Claim for Relief) and/or Plaintiff's California Business & Professions Code Section 17200 claim (Third Claim for Relief).³ Along with the moving papers, Moving Defendants filed a plethora of supporting materials.⁴

On April 16, 2001, Plaintiff filed his opposing papers to the two Motions (the "Copyright Opposition," and the "Trademark Opposition"). Plaintiff also submitted his own evidence in support thereof.⁵ On April 30, 2001, Moving Defendants submitted their two sets of reply papers (the "Copyright Reply," and the "Trademark Reply").⁶ On May 8, 2001, the Court continued the hearing on the Motions to June 18, 2001.

II. LEGAL STANDARD ON A MOTION FOR SUMMARY JUDGMENT

The party moving for summary judgment has the initial burden of establishing that there is "no genuine issue as to any material fact and that [it] is entitled to a judgment as a matter of law." Fed. R. Civ. Pro. 56(c); see British Airways Bd. v. Boeing Co., 585 F.2d 946, 951 (9th Cir. 1978); Fremont Indemnity Co. v. California Nat'l Physician's Insurance Co., 954 F.Supp. 1399, 1402 (C.D.Cal.1997).

If the moving party has the burden of proof at trial (e.g., a plaintiff on a claim for relief, or a defendant on an affirmative defense), the moving party must make a "showing sufficient for the court to hold that no reasonable trier of fact could find other than for the moving party." Calderone v. United States, 799 F.2d 254, 259 (6th Cir.1986) (quoting from Schwarzer, Summary Judgment Under the Federal Rules: Defining Genuine Issues of Material Fact, 99 F.R.D. 465, 487-88 (1984)). Thus, if the moving party has the burden of proof at trial, that party "must establish beyond peradventure all of the essential elements of the claim or defense to warrant judgment in [its] favor." Fontenot v. Upjohn Co., 780 F.2d 1190, 1194 (5th Cir. 1986) (emphasis in original); see Calderone, 799 F.2d at 259.

If the opponent has the burden of proof at trial, the moving party has no burden to negate the opponent's claim. Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). The moving party does not have the burden to produce any evidence showing the absence of a genuine issue of material fact. Id. at 325, 106 S.Ct. 2548. "Instead, ... the burden on the moving party may be discharged by `showing' — that is, pointing out to the district court — that there is an absence of evidence to support the nonmoving party's case." Id. (citations omitted).

Once the moving party satisfies this initial burden, "an adverse party may not rest upon the mere allegations or denials of the adverse party's pleadings ... [T]he adverse party's response ... must set forth specific facts showing that there is a genuine issue for trial." Fed. R. Civ. Pro. 56(e) (emphasis added). A "genuine issue" of material fact exists only when the nonmoving party makes a sufficient showing to establish the essential elements to that party's case, and on which that party would bear the burden of proof at trial. Celotex, 477 U.S. at 322-23, 106 S.Ct. 2548. "The mere existence of a scintilla of evidence in support of the plaintiff's position will be insufficient; there must be evidence on which a reasonable jury could reasonably find for plaintiff." Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 252, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). The evidence of the nonmovant is to be believed, and all justifiable inferences are to be drawn in favor of the nonmovant. Id. at 248, 106 S.Ct. 2505. However, the court must view the evidence presented "through the prism of the substantive evidentiary burden." Id. at 252, 106 S.Ct. 2505.

III. FACTUAL BACKGROUND

The parties largely agree on the facts which are most material to decision on the instant Motions, though there are disputed issues of fact which are mostly collateral to the questions presented by these Motions. Thus, the following summary of the operative facts of this case, though complete enough to decide the instant Motions, does not address every fact or piece of evidence submitted by the parties. To the extent possible, the Court relies on the parties' statement(s) of the undisputed facts. Where facts are disputed, the Court so states. Where it is necessary to do so, all justifiable inferences are drawn in Plaintiff's favor, as is required on motions for summary judgment.

A. The Mystery Magician

In 1985 and 1986, Plaintiff Rice began developing the concept and screenplay for a program called "The Mystery Magician." A screenplay was completed by April, 1986. See Complaint ¶¶ 24-26; Exhibit B to Complaint (April 4, 1986 "revised" version of screenplay); Copyright UF ¶ 1. Plaintiff filed an application for copyright registration in May, 1986, and a Certificate of Registration was subsequently issued. See Exhibit B to Complaint (Certificate of Registration: PAu 852 154). Also in 1986, Plaintiff entered into a distribution deal with CBS/Fox Video for production, manufacture, marketing and...