Warren v. Fox Family Worldwide, Inc.

Decision Date13 May 2003
Docket NumberNo. 01-57107.,01-57107.
Citation328 F.3d 1136
CourtU.S. Court of Appeals — Ninth Circuit
PartiesRichard WARREN; Triplet Music Enterprises, Inc., a Corporation existing under the laws of California; Mini-Persons, Inc., a California Corporation & Successor-in-Interest of Triplet; Forerunner Industries, Inc., a Delaware Corporation authorized to do business in California, Plaintiffs-Appellants, v. FOX FAMILY WORLDWIDE, INC.; The Christian Broadcasting Network, Inc.; Princess Cruise Lines, Ltd., Defendants-Appellees.

Leonard J. Comden (argued) and Alan I. Cyrlin, Wasserman, Comden, Casselman & Pearson, Tarzana, CA, for the plaintiffs-appellants.

Robert C. Welsh (argued) and Drew E. Breuder, O'Melveny & Myers, Los Angeles, CA, for defendants-appellees Fox Family Worldwide, Inc., The Christian Broadcasting Network, Inc., and MTM Productions.

Jeffrey C. Briggs, Alschuler Grossman Stein & Kahan, Santa Monica, CA, for defendant-appellee Princess Cruise Lines, Ltd.

Appeal from the United States District Court for the Central District of California; Margaret M. Morrow, District Judge, Presiding. D.C. No. CV-01-04667-MMM.

Before B. FLETCHER, ALARCÓN and HAWKINS, Circuit Judges.

MICHAEL DALY HAWKINS, Circuit Judge.

In this dispute between plaintiff-appellant Richard Warren ("Warren") and defendants-appellees Fox Family Worldwide ("Fox"), MTM Productions ("MTM"),1 Princess Cruise Lines ("Princess"), and the Christian Broadcasting Network ("CBN"), Warren claims that defendants infringed the copyrights in musical compositions he created for use in the television series "Remington Steele." Concluding that Warren has no standing to sue for infringement because he is neither the legal nor beneficial owner of the copyrights in question, we affirm the district court's Rule 12 dismissal of Warren's complaint.

FACTS AND PROCEDURAL HISTORY

Warren and Triplet Music Enterprises, Inc. ("Triplet") entered into the first of a series of detailed written contracts with MTM concerning the composition of music for "Remington Steele." This agreement stated that Warren, as sole shareholder and employee of Triplet, would provide services by creating music in return for compensation from MTM. Under the agreement, MTM was to make a written accounting of all sales of broadcast rights to the series and was required to pay Warren a percentage of all sales of broadcast rights to the series made to third parties not affiliated with ASCAP or BMI.2

Warren brought suit in propria persona against Fox, MTM, CBN, and Princess, alleging copyright infringement, breach of contract, accounting, conversion, breach of fiduciary duty, breach of covenants of good faith and fair dealing, and fraud.

After retaining counsel, Warren filed a First Amended Complaint ("the amended complaint") alleging the same causes of action. Warren claims he created approximately 1,914 musical works used in the series pursuant to the agreements with MTM; that MTM and Fox have materially breached their obligations under the contracts by failing to account for or pay the full amount of royalties due Warren from sales to parties not affiliated with ASCAP or BMI; and that MTM and Fox infringed Warren's copyrights in the music by continuing to broadcast and license the series after materially breaching the contracts.

As to the other defendants, Warren claims that CBN and Princess infringed his copyrights by broadcasting "Remington Steele" without his authorization. While alleging that CBN and Princess were operating pursuant to a license or distribution from MTM, Warren claims that their behavior was nevertheless infringement because the broadcasts occurred after MTM breached its agreement with him, and so the copyright reverted to him and any license CBN or Princess may have had was no longer valid.3 Warren seeks damages, an injunction, and an order declaring him the owner of the copyrights at issue.

Defendants moved to dismiss, arguing that Warren's infringement claims should be dismissed for lack of standing because he is neither the legal nor beneficial owner of the copyrights. The district court dismissed Warren's copyright claims without leave to amend and dismissed his state law claims without prejudice to their refiling in state court, holding that Warren lacked standing because the works were made for hire, and because a creator of works for hire cannot be a beneficial owner of a copyright in the work. Warren v. Fox Family Worldwide, Inc., 171 F.Supp.2d 1057, 1070-72(C.D.Cal.2001). Warren appeals.

DISCUSSION

We review de novo a district court's order dismissing a complaint for lack of jurisdiction under Rule 12(b)(1) or for failure to state a claim under Rule 12(b)(6). King County v. Rasmussen, 299 F.3d 1077, 1088 (9th Cir.2002). The nature of the dismissal requires us to accept all allegations of fact in the complaint as true and construe them in the light most favorable to the plaintiffs. Zimmerman v. City of Oakland, 255 F.3d 734, 737 (9th Cir.2001). However "we are not required to accept as true conclusory allegations which are contradicted by documents referred to in the complaint," Steckman v. Hart Brewing, Inc., 143 F.3d 1293, 1295-96(9th Cir.1998), and "[w]e do not ... necessarily assume the truth of legal conclusions merely because they are cast in the form of factual allegations." W. Mining Council v. Watt, 643 F.2d 618, 624 (9th Cir.1981). A jurisdictional challenge under Rule 12(b)(1) may be made either on the face of the pleadings or by presenting extrinsic evidence. White v. Lee, 227 F.3d 1214, 1242 (9th Cir.2000). Where jurisdiction is intertwined with the merits, we must "assume[] the truth of the allegations in a complaint ... unless controverted by undisputed facts in the record." Roberts v. Corrothers, 812 F.2d 1173, 1177 (9th Cir. 1987).

Standing

Under the Copyright Act of 1976 (the "Act"), "[t]he legal or beneficial owner of an exclusive right under a copyright is entitled ... to institute an action for any infringement of that particular right committed while he or she is the owner of it." 17 U.S.C. § 501(b). MTM argues that the works Warren composed were "works made for hire," and Warren is therefore not the legal owner and thus lacks standing. Warren argues that the contracts do not create a work-for-hire relationship, and that, even if they do, MTM's breaches of the agreements entitle Warren to rescind the contracts and regain legal ownership of the copyrights. In the alternative, he argues that he is a beneficial owner because he is entitled to royalties and therefore he may sue under § 501(b).

It is appropriate to address the question of standing in deciding a motion to dismiss because "[t]he elements of standing are `an indispensable part of the plaintiff's case,' and accordingly must be supported at each stage of litigation in the same manner as any other essential element of the case." Cent. Delta Water Agency v. United States, 306 F.3d 938, 947 (9th Cir.2002) (quoting Lujan v. Defenders of Wildlife, 504 U.S. 555, 561, 112 S.Ct. 2130, 119 L.Ed.2d 351 (1992)). Further, if Warren lacks standing to assert his federal copyright claims, the district court did not have subject matter jurisdiction and dismissal was appropriate. See Fed.R.Civ.P. 12(b)(1); Scott v. Pasadena Unified Sch. Dist., 306 F.3d 646, 664 (9th Cir.2002). However, at this stage of the pleading, Warren need only show that the facts alleged, if proved, would confer standing upon him. See Steel Co. v. Citizens for a Better Environment, 523 U.S. 83, 104, 118 S.Ct. 1003, 140 L.Ed.2d 210 (1998).

A. Work-For-Hire Status

The Act provides that copyright ownership "vests initially in the author or authors of the work." 17 U.S.C. § 201(a). However, if the work is made for hire, "the employer or other person for whom the work was prepared is considered the author..., and, unless the parties have expressly agreed otherwise in a written instrument signed by them, owns all the rights in the copyright." 17 U.S.C. § 201(b). Section 101 of the Act defines a "work made for hire" as:

(1) a work prepared by an employee within the scope of his or her employment; or (2) a work specially ordered or commissioned for use ... as a part of a motion picture or other audiovisual work, ... if the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire.

17 U.S.C. § 101. The parties agree that Warren was not an employee of MTM, but MTM contends that the agreements signed by the parties illustrate an express agreement that the works in question were specially commissioned as works for hire.4 We agree.

The Act confers work-for-hire status on a work where "the parties expressly agree in a written instrument signed by them that the work shall be considered a work made for hire." 17 U.S.C. § 101. The first agreement, signed on February 25, 1982, states that MTM contracted to employ Warren "to render services to [MTM] for the television pilot photoplay now entitled `Remington Steele.'" It also is clear that the parties agreed that MTM would "own all right, title and interest in and to [Warren's] services and the results and proceeds thereof, and all other rights granted to [MTM] in [the Music Employment Agreement] to the same extent as if ... [MTM were] the employer of [Warren]." The Music Employment Agreement provided:

As [Warren's] employer for hire, [MTM] shall own in perpetuity, throughout the universe, solely and exclusively, all rights of every kind and character, in the musical material and all other results and proceeds of the services rendered by [Warren] hereunder and [MTM] shall be deemed the author thereof for all purposes.

The parties later executed contracts almost identical to these first agreements in June 1984, July 1985, and November 1986. As the district court noted, these subsequent contracts are even more explicit in defining the compositions as ...

To continue reading

Request your trial
945 cases
  • Choudhuri v. Wells Fargo Bank, N.A.
    • United States
    • U.S. District Court — Northern District of California
    • 25 Octubre 2011
    ...under Rule 12(b)(1) may be made either on the face of the pleadings or by presenting extrinsic evidence." Warren v. Fox Family Worldwide, Inc., 328 F.3d 1136, 1139 (9th Cir. 2003). In a "facial" challenge, the court assumes the truth of plaintiff's factual allegations and draws all reasonab......
  • Nat'l Educ. Ass'n v. DeVos
    • United States
    • U.S. District Court — Northern District of California
    • 17 Diciembre 2018
    ...of fact in the complaint as true and construe[s] them in the light most favorable to the plaintiff[ ]." Warren v. Fox Family Worldwide, Inc. , 328 F.3d 1136, 1139 (9th Cir. 2003).20 The Department argues that the plaintiffs lack standing. Standing pertains to the court's subject-matter juri......
  • Kellman v. Whole Foods Mkt., Inc.
    • United States
    • U.S. District Court — Northern District of California
    • 12 Junio 2018
    ...of fact in the complaint as true and construe[s] them in the light most favorable to the plaintiff[ ]." Warren v. Fox Family Worldwide, Inc. , 328 F.3d 1136, 1139 (9th Cir. 2003). Federal-court jurisdiction extends only to "cases" and "controversies." Raines v. Byrd , 521 U.S. 811, 818, 117......
  • Solid Host, Nl v. Namecheap, Inc.
    • United States
    • U.S. District Court — Central District of California
    • 19 Mayo 2009
    ...is central to the plaintiff's claim, and no party questions the authenticity of the document," citing Warren v. Fox Family Worldwide, Inc., 328 F.3d 1136, 1141 n. 5 (9th Cir.2003), and Chambers v. Time Warner, Inc., 282 F.3d 147, 153 n. 3 (2d Cir.2002)). The court may also properly consider......
  • Request a trial to view additional results
1 books & journal articles

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