Warren v. Fox Family Worldwide, Inc.

• Decision Date: 15 October 2001
• Docket Number: No. 01CV4667 MMM (AJWx).,01CV4667 MMM (AJWx).
• Citation: 171 F.Supp.2d 1057
• Parties: Richard WARREN, Triplet Music Enterprises, Inc., Mini-Persons, Inc., and Forerunner Industries, Inc. Plaintiff, v. FOX FAMILY WORLDWIDE, INC., Princess Cruises Lines, Ltd., the Christian Broadcasting Network, Inc., MTM Productions and Does 1 through 10, inclusive Defendants.
• Court: U.S. District Court — Central District of California

171 F.Supp.2d 1057

Richard WARREN, Triplet Music Enterprises, Inc., Mini-Persons, Inc., and Forerunner Industries, Inc. Plaintiff, v. FOX FAMILY WORLDWIDE, INC., Princess Cruises Lines, Ltd., the Christian Broadcasting Network, Inc., MTM Productions and Does 1 through 10, inclusive Defendants.

No. 01CV4667 MMM (AJWx).

United States District Court, C.D. California.

October 15, 2001.

COPYRIGHT MATERIAL OMITTED

Leonard J. Comden, Alan I. Cyrlin, Wasserman Comden & Casselman, Tarzana, CA, for Richard Warren, Triplet Music Enterprises Inc., Mini-Persons Inc., Forerunner Industries Inc.

Richard Warren, Calabasas, CA, Pro se.

Daniel M. Petrocelli, Robert C. Welsh, Drew Breuder, O'Melveny & Myers, Los Angeles, CA, for Fox Family Worldwide Inc., Princess Cruises, Christian Broadcast Network, Inc.

ORDER GRANTING DEFENDANTS' MOTION TO DISMISS

MORROW, District Judge.

In his first amended complaint, plaintiff Richard Warren¹ alleges that defendants Fox Family Worldwide ("Fox"), MTM Productions, the Christian Broadcasting Network ("CBN") and Princess Cruises have infringed copyrights in music he composed for the television series "Remington Steele." Warren asserts that he is the beneficial owner of the copyrights, which Fox, MTM and CBN have infringed either by selling broadcast rights to, or broadcasting, episodes of the series without accounting for and paying royalties to him. Warren similarly contends that Princess Cruises infringed the copyrights by broad-casting episodes of the series on closecircuit television in 1998 and 1999. In addition to a claim for copyright infringement and a request that the copyrights be assigned irrevocably to him, Warren pleads state law claims for breach of contract, fraud, conversion, unjust enrichment, breach of fiduciary duty, breach of the implied covenant of good faith and fair dealing, unfair competition, and an accounting.

On September 13, 2001, Fox and CBN filed a motion to dismiss Warren's amended complaint. Citing Rules 12(b)(1) and 12(b)(6) of the Federal Rules of Civil Procedure, they assert that the court lacks subject matter jurisdiction and that the complaint fails to state a claim upon which relief can be granted. Specifically, Fox and CBN argue that Warren is neither the legal nor the beneficial owner of the copyrights in question, and thus that he lacks standing to sue. They further assert that he cannot sue under the Copyright Act because he failed to register a copyright in the relevant musical compositions prior to filing the action. Finally, they contend that they cannot have infringed copyrights of which they are the legal owners. Princess Cruises has filed a companion motion, adopting the bulk of the arguments raised by Fox and CBN.

Warren maintains that he is the beneficial owner of the copyrights, or alternatively that ownership should be returned to him because Fox and MTM have breached agreements to pay him royalties. Warren also asserts that he was not required to register the copyrights before pursuing an infringement claim.

I. FACTUAL BACKGROUND

The complaint alleges the following:

On or about February 1, 1983, Warren and Triplet executed the first of a series of written contracts with MTM regarding the composition of music for the television series "Remington Steele."² The contract provided that MTM would account for sales of broadcast rights to the series to third parties that were affiliated with either ASCAP or BMI.³ It further provided that when MTM sold broadcast rights to the series to third parties not affiliated with ASCAP or BMI, it would allocate a portion of the sales price to the sale of music and pay Warren fifty percent of that sum.⁴ Accounting for all sales was to be in writing.⁵ Warren alleges that, pursuant to the contract, he transferred approximately 1,914 original musical works to MTM that were used in the "Remington Steele" series.⁶ Fox is the successor-in-interest to MTM.⁷

Warren alleges that MTM and Fox have materially breached their obligations under MTM's contracts with him by failing to account for sales of the broadcast rights to "Remington Steele" to third parties not affiliated with ASCAP and BMI, and by failing to pay 50% of the monies received from these sales for music to Warren.⁸ Warren also asserts that MTM and Fox have infringed his copyrights in the musical works used in the series by continuing to broadcast the series, and license it for broadcast, after materially breaching the contracts.⁹

Warren contends that CBN infringed his copyrights in the musical compositions by broadcasting "Remington Steele" on the Family Channel, a cable network owned and operated by CBN. He alleges that, at the time of the broadcasts, the Family Channel was not affiliated with ASCAP or BMI, and that he has not received royalties in connection with the broadcasts.¹⁰ Warren finally alleges that, in or about 1998 or 1999, MTM or Fox sold one or more episodes of "Remington Steele" to Princess Cruises, which broadcast the shows over its on-board television system.¹¹ He asserts that Princess Cruises was similarly not affiliated with ASCAP or BMI, and that he received no royalties for its broadcasts.¹²

II. DISCUSSION

A. Legal Standard Governing Motions To Dismiss Under Rule 12(b)(1)

The party mounting a Rule 12(b)(1) challenge to the court's jurisdiction may do so either on the face of the pleadings or by presenting extrinsic evidence for the court's consideration. See White v. Lee, 227 F.3d 1214, 1242 (9th Cir.2000) ("Rule 12(b)(1) jurisdictional attacks can be either facial or factual"); Thornhill Publishing Co. v. General Tel. & Electronics, 594 F.2d 730, 733 (9th Cir.1979) (facial attack); Meliezer v. Resolution Trust Co., 952 F.2d 879, 881 (5th Cir.1992) (challenge based on extrinsic evidence). It is the plaintiff who bears the burden of demonstrating that the court has subject matter jurisdiction to hear the action. See Kokkonen v. Guardian Life Ins. Co., 511 U.S. 375, 377, 114 S.Ct. 1673, 128 L.Ed.2d 391 (1994); Stock West, Inc. v. Confederated Tribes, 873 F.2d 1221, 1225 (9th Cir.1989).

There is an important difference between Rule 12(b)(1) motions attacking the complaint on its face and those relying on extrinsic evidence. In ruling on the former, courts must accept the allegations of the complaint as true. See Valdez v. United States, 837 F.Supp. 1065, 1067 (E.D.Cal. 1993), aff'd., 56 F.3d 1177 (9th Cir.1995). In deciding the latter, courts may weigh the evidence presented, and determine the facts in order to evaluate whether they have the power to hear the case. See Roberts v. Corrothers, 812 F.2d 1173, 1177 (9th Cir.1987). The "court may not[, however,] resolve genuinely disputed facts where `the question of jurisdiction is dependent on the resolution of factual issues going to the merits.'" Id. (quoting Augustine v. United States, 704 F.2d 1074, 1077 (9th Cir.1983)). See also Careau Group v. United Farm Workers, 940 F.2d 1291, 1293 (9th Cir.1991) ("where jurisdiction is so intertwined with the merits that its resolution depends on the resolution of the merits, `the trial court should employ the standard applicable to a motion for summary judgment'"); Rosales v. United States, 824 F.2d 799, 803 (9th Cir.1987) ("A district court may hear evidence and make findings of fact necessary to rule on the subject matter jurisdiction question prior to trial, if the jurisdictional facts are not intertwined with the merits") Where jurisdiction is intertwined with merits, "the district court [must] assume[] the truth of the allegations in a complaint ... unless controverted by undisputed facts in the record." Roberts, supra, 812 F.2d at 1177. See also Islands, Inc. v. United States Bureau of Reclamation, 64 F.Supp.2d 966, 968 (E.D.Cal.1999), vacated on other grounds, 2001 WL 503478 (9th Cir. May 11, 2001) ("A court is required to convert a Rule 12(b)(1) motion to dismiss into a Rule 12(b)(6) motion or Rule 56 summary judgment motion when resolution of the jurisdictional question is intertwined with the merits of the case"); Laurence v. United States, 1993 WL 266657, * 2 (N.D.Cal. July 8, 1993) (same).

B. Legal Standard Governing Motions To Dismiss Under Rule 12(b)(6)

A Rule 12(b)(6) motion tests the legal sufficiency of the claims asserted in the complaint. Rule 12(b)(6) must be read in conjunction with Rule 8(a) which requires "a short and plain statement of the claim showing that the pleader is entitled to relief." 5A Charles A. Wright & Arthur R. Miller, FEDERAL PRACTICE AND PROCEDURE, § 1356 (1990).

A court may not dismiss a complaint for failure to state a claim "unless it appears beyond doubt that the plaintiff can prove no set of facts in support of his claim which would entitle him to relief." Conley v. Gibson, 355 U.S. 41, 45-46, 78 S.Ct. 99, 2 L.Ed.2d 80 (1957); Johnson v. Knowles, 113 F.3d 1114, 1117 (9th Cir.1997); Moore v. City of Costa Mesa, 886 F.2d 260, 262 (9th Cir.1989) (quoting Conley), cert. denied, 496 U.S. 906, 110 S.Ct. 2588, 110 L.Ed.2d 269 (1990). In other words, a Rule 12(b)(6) dismissal is proper only where there is either a "lack of a cognizable legal theory" or "the absence of sufficient facts alleged under a cognizable legal theory." Balistreri v. Pacifica Police Dept., 901 F.2d 696, 699 (9th Cir.1988).

As noted above, in deciding a motion to dismiss for failure to state a claim pursuant to Rule 12(b)(6), the court's review is limited to the contents of the complaint. Campanelli v. Bockrath, 100 F.3d 1476, 1479 (9th Cir.1996); Allarcom Pay Television, Ltd. v. General Instrument Corp., 69 F.3d 381, 385 (9th Cir.1995). The court must accept all factual allegations pleaded in the complaint as true, and must construe them and draw all reasonable inferences from them in favor of the nonmoving party. Cahill v. Liberty Mutual Ins. Co., 80 F.3d 336, 337-38 (9th Cir.1996); Mier v. Owens, 57 F.3d 747, 750 (9th Cir.1995). It need not, however, accept as true unreasonable inferences or conclusory legal...