Williams v. Columbia Broadcasting Systems, Inc., SA CV 99-41 DOC(ANx).

CourtUnited States District Courts. 9th Circuit. United States District Courts. 9th Circuit. Central District of California
Writing for the CourtCarter
Citation57 F.Supp.2d 961
PartiesWalter WILLIAMS, Dreamsite Productions, Inc., Plaintiffs, v. COLUMBIA BROADCASTING SYSTEMS, INC., Defendant.
Docket NumberNo. SA CV 99-41 DOC(ANx).,SA CV 99-41 DOC(ANx).
Decision Date07 July 1999
57 F.Supp.2d 961
Walter WILLIAMS, Dreamsite Productions, Inc., Plaintiffs,
No. SA CV 99-41 DOC(ANx).
United States District Court, C.D. California.
July 7, 1999.

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Edward A. Ruttenberg, Leopold Petrich & Smith, Los Angeles, CA, for Walter Williams and Dreamsite Productions, Inc., plaintiffs.

John Michael Gatti, Jonathan David Avila, Frederick F. Mumm, White O'Connor Curry Gatti & Avanzado, Los Angeles, CA, for Columbia Broadcasting System, Inc., defendant.


CARTER, District Judge.

This matter is before the Court on two motions brought by Defendant. First, Defendant moves to dismiss pursuant to Fed. R.Civ.P. 12(b)(1) for lack of subject matter jurisdiction or, in the alternative, for summary judgment. Second, Defendant moves for summary judgment or, in the alternative, summary adjudication. Having fully considered the moving and responding papers and oral argument, the Court denies the first motion and grants the second motion.

I. Facts

Plaintiffs own the copyright to "Mr. Bill," a popular character from the late 1970s that debuted on NBC's "Saturday Night Live" and has recently resurfaced on the FOX Family Channel. Mr. Bill, a funny looking clay figure, was famous for getting into accidents that would seemingly destroy or disfigure the character and for his famous moniker "ohhhhh nooooo!" Fortunately, since Mr. Bill was made of clay, he was never seriously hurt, and can continue to amuse American television viewers.

Defendant CBS is a national television network which has a contract to televise the annual football games between the United States Military Academy and the United States Naval Academy (the "Army/ Navy Game"). During the course of the Army/Navy Game, CBS broadcasts "spirit messages" sent in by cadets at the academies or American troops throughout the world in support of their respective service branch. These messages, under thirty seconds in length, are solicited by the Public Affairs Offices of the academies months before the game. They are then produced by individual units and sent into the academies for review and forwarding to CBS. CBS then selects a small number of these messages to broadcast.

Toward the end of the 1997 Army/Navy Game, CBS broadcast a 23 second message entitled "Sailor Bill Joins the Army" (the "Segment"). This message, produced by soldiers in the Light Fighters of the 25th Infantry Division at Schofield Barracks, Hawaii, depicted a clay figure, similar to Mr. Bill, wearing what appears to be a U.S. Navy jumpsuit with the name "Navy" on its chest, and a white sailor hat. "Sailor Bill" was apparently intended to depict a Navy Seaman undergoing army training. Predictably, Sailor Bill befell a horrible fate as he was dropped from a helicopter, run over by a tank, and then riddled with machine gun bullets. At the conclusion of the Segment, the troops shout "Go Army, Beat Navy!" Plaintiff Williams did not see the Segment when it aired. Indeed, Williams first viewed the Segment approximately one year later,

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and only after having learned of it from his friend Matt Neuman.

Plaintiffs commenced this action against CBS for copyright and trademark infringement, claiming that Sailor Bill infringed upon their ownership of Mr. Bill, and that CBS, without Plaintiffs' permission, used the character for commercial purposes.

II. Defendant's Motion to Dismiss for Lack of Subject Matter Jurisdiction

In this motion, Defendant contends that it was acting "with the authorization or consent of the Government" in broadcasting the segment, and as such, jurisdiction of this matter is vested exclusively in the United States Court of Federal Claims pursuant to 28 U.S.C. § 1498(b)1. Defendant moves to dismiss for lack of subject matter jurisdiction, or in the alternative for summary judgment based on 28 U.S.C. § 1498(b).

The United States Court of Appeals for the Federal Circuit held in Manville Sales Corp. v. Paramount Systems Inc., 917 F.2d 544, 555 (Fed.Cir.1990), that 28 U.S.C. § 1498(a) provides contractors with the Federal Government an affirmative defense in patent infringement cases.2 The Ninth Circuit precedent on section 1498, is a forty year old case not directly on point. In Neff Instrument Corp. v. Cohu Electronics, Inc., 269 F.2d 668 (9th Cir.1959), the Ninth Circuit reversed the trial court's summary judgment order on the grounds that there were material facts as to whether the contractor was in fact acting as an agent of the United States. But the Court there did not address or consider the jurisdictional questions.

There is considerable disagreement among federal courts over the nature of section 1498, with a number of courts concluding that section 1498 is an issue of federal subject matter jurisdiction, and not merely an affirmative defense. See e.g. Serra v. United States Gen. Services Admin., 667 F.Supp. 1042, 1051 (S.D.N.Y. 1987), aff'd 847 F.2d 1045, 1051 (2d Cir. 1988); Fulmer v. United States, 83 F.Supp. 137, 142 (N.D.Ala.1949).

A trend that emerges upon examination of this split of authority is that courts treating the issue as jurisdictional tend to do so in the context of cases where the United States or one of its agencies (e.g., the General Services Administration) is the defendant, whereas courts that conclude that section 1498 merely gives rise to an affirmative defense do so in cases where a private party is the defendant. Compare Fulmer, 83 F.Supp. 137 with Manville, 917 F.2d 544. While Defendant does point to one case, Croydon Co., Inc. v. Unique Furnishings, Ltd., 831 F.Supp. 480, 485 (E.D.N.C.1993), the general trend is in accord with the Federal Circuit's statement in Manville that there is:

"no inconsistency between interpreting section 1498(a) as a jurisdictional statute (waiving sovereign immunity) in suits against the United States and as merely codifying a defense that private parties who are alleged infringers may raise on the merits. That two different effects occur depending on the party raising section 1498(a) is the clear implication of Sperry [Gyroscope Co. v. Arma Engineering Co., 271 U.S. 232, 46 S.Ct. 505], 70 L.Ed. 922 and the other cases, read together."

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917 F.2d at 555. The same reasoning should apply to section 1498(b), the counterpart to subsection (a) dealing with copyright infringement. Although it is peculiar for a statute to have different effects depending on the party, the position is a logical approach for the Court to adopt. Since section 1498 acts as a waiver of sovereign immunity so long as the suit is commenced within the Court of Federal Claims, see Zimmerman v. United States, 422 F.2d 326, 327 (3d Cir.1970), a district court would not have subject matter jurisdiction in a copyright infringement case where the United States is a defendant. But where a private party is a defendant, section 1498 does not lend itself to determination on a jurisdictional motion. As the instant case suggests, the Court must make a factual determination — whether the contractor was acting "with the authorization or consent of the Government." Such a factual determination, unnecessary when the United States is the defendant, is appropriate only by trial or on a motion for summary judgment. This position is also consistent with the Supreme Court's decision in Richmond Screw Anchor v. United States, 275 U.S. 331, 48 S.Ct. 194, 72 L.Ed. 303 (1928), where the Court found that section 1498 was meant "to relieve the contractor entirely from liability of every kind.... The word `entire' emphasizes the exclusive and comprehensive character of the remedy." Regardless of whether section 1498 provides merely an affirmative defense or is a question of jurisdiction, a copyright owner will only be able to recover against the United States in the Court of Federal Claims.

Finally, the decisions that treat section 1498 as jurisdictional in suits against private parties, although well reasoned, do not carry the same authority as the decision by the Federal Circuit. If this were a matter for patent infringement, the determination by the Federal Circuit on subsection (a) would be binding on this Court, as the Federal Circuit has jurisdiction over all appeals from patent disputes. See 28 U.S.C. § 1295. Although this is a copyright dispute allegedly under subsection (b), over which the Ninth Circuit would have appellate jurisdiction, the similarity of the two provisions guides this Court's decision. Both subsections (a) and (b) of section 1498 are intended to serve the same purpose — to protect contractors of the federal government by providing that the only relief that may be granted is against the government in the Court of Federal Claims. The language in each statute is nearly identical. Thus, it would seem impossible to determine that subsection (b) raises an issue of jurisdiction, a fundamental question which goes to the power of the courts and may be raised at any time during the course of the litigation, even after a final judgment has been issued, while subsection (a) raises only an affirmative defense which a defendant waives if it fails to plead it. Therefore, 28 U.S.C. § 1498(b) must be considered an affirmative defense, and therefore dismissal under Fed.R.Civ.P. 12(b)(1) is improper.

In this instance, summary judgment is also improper. As Plaintiffs point out, Defendant has not plead section 1498(b) as an affirmative defense. Normally, the failure to plead an affirmative defense acts as a waiver, although Ninth Circuit has in some instances allowed the introduction of an affirmative defense on a motion for summary judgement when there is no prejudice to the opposing party. See e.g. Ledo Fin. Corp. v. Summers, 122 F.3d 825, 827 (9th Cir.1997).

Assuming arguendo that there is no prejudice to...

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