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SONY PICTURES v. FIREWORKS ENTERTAINMENT
156 F.Supp.2d 1148 (2001)
SONY PICTURES ENTERTAINMENT, INC., et al., Plaintiffs,
v.
FIREWORKS ENTERTAINMENT GROUP, INC., et al., Defendants,
And Related Cross Action.
CV No. 01-0723 ABC (AIJX).
United States District Court, C.D. California, Western Division.
July 16, 2001.
Mark S. Lee, Seth A. Gold, Manatt, Phelps & Phillips, Los Angeles, CA, for Plaintiffs.
Jeffrey S. Kravitz, Keith G. Wileman, Lord, Bissell & Brook, Los Angeles, CA, for Defendants.
ORDER GRANTING IN PART DEFENDANTS' MOTION FOR SUMMARY JUDGMENT OR SUMMARY ADJUDICATION ON PLAINTIFFS' CLAIMS AND GRANTING IN PART PLAINTIFFS' MOTION TO DISMISS, FOR SUMMARY JUDGMENT, OR TO STRIKE. COLLINS, District Judge. Defendants Fireworks Entertainment Group, Fireworks Communications Inc., Fireworks Productions, Inc., Paramount Pictures, and Mercury Entertainment's (collectively "Defendants") Motion for Summary Judgment or Summary Adjudication on Plaintiffs' Claims, as well as Plaintiffs Sony Pictures Entertainment, Inc. ("Sony"), TriStar Pictures, Inc. ("TriStar"), and Zorro Productions, Inc.'s ("ZPI") (collectively "Plaintiffs") Motion to Dismiss, for Summary Judgment, or to Strike came on regularly for a hearing before this Court on July 16, 2001. This case arises out of a dispute between Plaintiffs and Defendants about a television series, "Queen of Swords" ("QOS"). After considering the materials submitted by the parties, argument of counsel, and the case file, the Court GRANTS IN PART Defendants' Motion and Plaintiffs' Motion as described herein. I. PROCEDURAL BACKGROUNDPlaintiffs filed their Complaint on January 24, 2001. Plaintiffs allege eight claims for relief: (1) infringement of Sony's copyright in the "Mask of Zorro;" ("MOZ") (3)1 infringement of ZPI's copyright in the "Zorro: Men Aren't The Only Ones With Dual Identities" comic book; (4) infringement of ZPI's copyright in the "Lady Rawhide-Book 1, Other People's Blood" comic book; (5) infringement of ZPI's copyright in the "Lady Rawhide-Book 3: It Can't Happen Here" comic book; (6) infringement of ZPI's copyright in the "Lady Rawhide-The Night They Killed Lady Rawhide" comic book; (6)2 false designation of origin under the Lanham Act § 43(a); (7) common law unfair competition under California law; and (8) statutory unfair competition under California law. On February 26, 2001, Plaintiffs filed a Motion for Preliminary Injunction, which Defendants opposed. The Court denied Plaintiff's Motion on April 5, 2001. On March 2, 2001, Defendants counterclaimed against Plaintiffs for: (1) invalidity of trademarks and service marks; (2) invalidity of copyrights; (3) declaratory relief; (4) statutory unfair competition; and
(5) common law unfair competition. On the same day, Defendants answered Plaintiffs' Complaint and asserted fifteen affirmative defenses. Of the fifteen affirmative defenses, only the second through fifth are presently at issue. Those defenses are: (2) the copyrights alleged in the Complaint are invalid and unenforceable, both generally and specifically as to Defendants' QOS; (3) the trademarks and service marks alleged in the Complaint are invalid and unenforceable both generally and specifically as to Defendants' QOS; (4) the "Zorro" character is not owned by Plaintiffs or any of them; and, (5) the "Zorro" character is in the public domain. On May 25, 2001, Defendants filed a Motion for Summary Judgment or Summary Adjudication on Plaintiffs' claims. Plaintiffs filed a Motion to Dismiss Defendants' first and third counter-claims, for Summary Judgment on Defendants' second, third, fourth, and fifth counter-claims, and for Summary Judgment on, or to Strike from Defendants' Answer, Defendants' second through fifth affirmative defenses. Each side opposed the other side's Motion, and each side filed a Reply.
1. Plaintiffs have mis-numbered their claims for relief. 2. Again, Plaintiffs have mis-numbered their claims for relief. 3. The Court will first address Defendants' Motion for Summary Judgment; therefore, this section views the evidence in the light most favorable to Plaintiffs, the non-moving party. 4. The Court has reviewed all the objections to the evidence upon which it has relied. To the extent that the Court has relied on that evidence in this Order, the objections are OVERRULED on the merits. Objections to evidence upon which the Court does not rely are OVERRULED as moot, except as indicated herein.
In addition, the Court DENIES Defendants' Request for Judicial Notice, filed July 6, 2001. 5. The parties contest whether ZPI has an ownership interest in the character "Zorro." ZPI contends that it has such an interest, and it has presented evidence of the origin of that interest. Specifically, ZPI has presented evidence that on July 26, 1949, Johnston McCulley, the author of "The Curse of Capistrano," entered into an agreement with Mitchell Gertz which states, "McCulley hereby desires to sell, transfer and assign all rights, licenses and privileges of every kind and nature whatsoever in and to the use of the name `Zorro' and to the character `Zorro' in any and all fields except magazine serialization and book publishing subject to the option above referred to...." Paragraph 1 of that Agreement states that:
McCulley hereby gives, grants, bargains, sells, signs, transfers and sets over forever the absolute exclusive and unqualified right, license and privilege throughout the world, to Gertz, his successors and assigns to specified rights "to the character `Zorro,' throughout the world forever, except that such rights are subject to contracts or motion picture rights entered into with Twentieth Century-Fox Film Corporation and Republic Productions, Inc. McCulley hereby represents and warrants that the motion picture rights granted to Twentieth Century-Fox Film Corporation and Republic Productions, Inc. did not include transfer of and did not transfer the exclusive rights to the use and portrayal of the character `Zorro' in motion pictures except as to the portrayal and use of the character in the motion pictures produced by such companies for the limited time set forth in such contracts." (Pl.Ex. 28; Declaration of Mark S. Lee ("Lee Decl.") ¶ 16.) 6. While ZPI claims to own rights to the character Zorro (Compl.¶¶ 1, 11-17), Plaintiffs do not allege in their Complaint a claim for copyright infringement of the character Zorro. (Pl. Opp'n. 2 n. 3.)
In addition, the Court notes that consistent with its previous Order denying Plaintiffs' Motion for Preliminary Injunction, wherein the Court wrote, "Plaintiffs concede that they own no copyright in the character Zorro," Sony, 137 F.Supp.2d at 1185 & n. 9, Plaintiffs admit "there is no copyright in the character [Zorro] per se." (Plaintiffs' Statement of Genuine Issues ("SOG") ¶ 46.) Instead, Plaintiffs rely on copyrights in works featuring or depicting the character Zorro to show United States copyright "in the character `Zorro' to the extent that character is more fully delineated in subsequent works that remain in copyright." (Motion for Preliminary Injunction ("MPI") Pl. Exs. 7, 9, 12, 13, 39, 58; MPI Curtis Decl. ¶ 15.) 7. It appears that the parties dispute the copyrights in the LR comic books, not the copyright in MOZ. Defendants argue that ZPI's failure to mention on the copyright registrations that the LR comic books were derivative works means that the Plaintiffs may not enforce their alleged copyrights. (Def.Mtn.7-8.) The Court notes, however, that only one of the LR comic books mentions Zorro, and even if that comic book (or any of the others at issue) were considered a derivative work, it could still be entitled to copyright protection. Entertainment Research Group, Inc. v. Genesis Creative Group, Inc.,122 F.3d 1211, 1218-19 (9th Cir.1997). The Court therefore declines at this time to find invalid Plaintiffs' copyrights in the LR comic books.
Defendants also argue that Plaintiffs have misused their alleged copyright ownership in Zorro. (Id. at 8-9.) Misuse of copyright does not invalidate a copyright but precludes its enforcement during the period of misuse. Practice Management Information Corp. v. American Medical Ass'n,121 F.3d 516, 520 & n. 9 (9th Cir.1997). The Court is unable to find at this time that, as a matter of law, Plaintiffs have used a "copyright to secure an exclusive right or limited monopoly not granted by the Copyright Office." Id. at 520. The Court, therefore, in viewing the facts in the light most favorable to Plaintiffs, assumes for purposes of this motion that Plaintiffs have valid copyrights in MOZ and the LR comic books at issue. 8. The Court discusses the "pitch-kit," which includes clips that were directly copied from MOZ, separately. 9. It is undisputed that Zorro appears in works whose copyrights have already expired, such as McCulley's story "The Curse of Capistrano" and Fairbanks's movie, "The Mark of Zorro." As these works have already entered the public domain, the portions of MOZ and LR comic books that use elements from McCulley's story or elements from Fairbanks' movie cannot be infringed except as far as MOZ or LR have incorporated original elements. 10. Scenes a faire are forms of expression that are "`as a practical matter indispensable, or at least standard in the treatment of a given [idea].'" Apple Computer, 35 F.3d at 1444 (citation and internal quotation marks omitted). See also 4 Nimmer § 13.03[B][4] at 13-73 ("similarity of incidents or plot that necessarily follows from a common theme or setting."). Though what may constitute scenes a faire will vary depending on the medium and the subject matter of the particular copyrighted work at issue, the question is whether that particular expression is so typical of the genre as to be "indispensable." 11. Plaintiffs allege that Defendants' "pitch-kit" video infringed MOZ as part of the first claim for relief. In response to this Court's Order dated July 2, 2001, Defendants filed a copy of the "pitch-kit" video that includes clips from MOZ. Defendants also filed a copy of the revised "pitch-kit" video wherein the clips from MOZ were excerpted and replaced with other footage, mostly from QOS. The Court has reviewed both of these "pitch-kit" videos. The Court notes that while each individual clip of MOZ used in the original "pitch-kit" may only be a few seconds in length, it appears that the bulk of the video consists of MOZ clips that have been strung together to "pitch" QOS. Plaintiff's use of MOZ footage becomes particularly obvious upon review of the revised "pitch-kit" video, wherein clips of QOS actors are used in place of the MOZ footage. Because it appears that most of the original "pitch-kit" video is comprised of footage from MOZ, the Court cannot find at this time that, as a matter of law, Defendants' copying was de minimis, i.e., that copying has occurred to such a trivial extent so as to fall below the quantitative threshold of substantial similarity. See De Bautuc v. Spelling Television, No. CV-98-6002, at 5 (C.D.Cal.1998) (citing Ringgold v. Black Entertainment Television,126 F.3d 70, 74 (2d Cir.1997)). 12. The Court previously noted that because Plaintiffs did not allege in their Complaint that the "pitch-kit" video clips were still being shown, the use of the film clips as part of a "pitch-kit" was not at issue for purposes of Plaintiff's Motion for Preliminary Injunction. Sony, 137 F.Supp.2d at 1182 n. 4. 13. Plaintiffs appear to argue only similarity between LR and the QOS in opposition to Defendants' Motion for Summary Judgment. (Pl. Opp'n 10.) Nevertheless, the Court addresses whether the other characters previously identified in connection with Plaintiffs' Motion for Preliminary Injunction are similar. Defendants, rather than addressing whether any similarities exist, merely question the validity of Plaintiffs' copyrights in the LR comic books at issue. 14. In opposition to Defendants' Motion for Summary Judgment, Plaintiffs submit a copy of the comic book "Zorro: The Lady Wears Red." (Declaration of Don McGregor ("McGregor Decl.") Ex. A.) This comic book includes the comic entitled, "Zorro: Men Aren't The Only Ones With Dual Identities," which is one of the comic books in which Plaintiffs claim infringement. This comic book pictures the villain Machete; however, Plaintiffs again provide no analysis of any plot similarities between LR and QOS. The Court has itself reviewed the comic book for any such similarities and finds none. 15. Plaintiffs' arguments regarding themes in QOS are somewhat contradictory. Plaintiffs argue that QOS has a theme of overcoming personal revenge when comparing it to MOZ, but argue the theme of taking violent personal revenge, when comparing QOS to LR. 16. The Court, however, is not convinced that the QOS could really be seeking revenge for her father's death because she was told he died in a horse riding accident. Although she does not accept this explanation as the truth, and she seeks to investigate the facts surrounding his death, she has not learned the truth of how he died in the episodes viewed so far. 17. The Court notes that Plaintiffs argue, "[b]oth QOS and LR involve young, female Spanish aristocrats who decide to avenge the injury/death of a family member injured by a military assistant to a Spanish military ruler." (Mtn. 15.) This "plot summary," however, appears to be merely a reiteration of Plaintiffs' theme. 18. Plaintiffs appear to argue that Defendants have infringed the copyrights of Plaintiffs' characters, LR, Scarlett Fever, and Machete, as well as the copyrights in the comic books. To the extent that Plaintiffs are unable to show similarity between the characters in QOS and the characters in LR, however, Plaintiffs are also unable to show a similarity between QOS and the comic book LR. 19. "In determining whether confusion between related goods is likely, the following factors are relevant: (1) strength of the mark; (2) proximity of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type of goods and the degree of care likely to be exercised by the purchaser; (7) defendant's intent in selecting the mark; and, (8) likelihood of expansion of the product lines." AMF Inc. v. Sleekcraft Boats,599 F.2d 341, 348-49 (9th Cir.1979). 20. Plaintiffs concede that they must establish secondary meaning in this case. 21. On their Motion for Preliminary Injunction, Plaintiffs asked the Court, in section (e) of their proposed preliminary injunction, to enjoin and restrain Defendants from:
imitating, copying, or making any other unauthorized use of any common law trademarks and trade dress associated with the distinctive "key art" advertising for the motion picture "The Mask of Zorro;" and/or all common law trademarks and trade dress in the appearance, skills, secret identity motif, personality traits, personal background, setting, signature "Z" mark, or "rearing horse" mark, or any confusingly similar combination of some of those distinctive elements[.] Because this description is relatively vague, the Court asked Plaintiffs at oral argument to clarify exactly what Plaintiffs claimed as their trademark or trade dress rights in the character Zorro. Plaintiffs attempted to clarify their claim; however, it remained unclear to the Court how Plaintiffs had trademark or trade dress rights in the character Zorro such that Defendants' series QOS could be infringing. In opposition to Defendants' Motion for Summary Judgment, Plaintiffs have again attempted to define trademark and trade dress rights in Zorro; however, the Court also finds Plaintiff's latest attempt unavailing. 22. The Court notes that the parties agree that Defendants did not use the word "Zorro" or the stylized "Z" in the QOS series. It is therefore not important for purposes of this case whether Plaintiffs have a trademark in either the word "Zorro" or the stylized "Z." 23. Plaintiffs do not explain what these elements are. 24. Because Plaintiffs have not sufficiently defined their alleged trademark rights to the character Zorro, the Court need not assess whether Plaintiffs have established secondary meaning, let alone whether there is a likelihood of confusion under Sleekcraft. 25. Plaintiffs also seek to recover for Defendants' alleged copying of the LR comic books at issue. The Court, however, has already dismissed those claims for lack of similarity under the extrinsic test and does not discuss those claims again here. 26. The formality of an affidavit and a formal Rule 56(f) "motion" has not always been required. See, e.g., Garrett v. City & County of San Francisco,818 F.2d 1515, 1518 (9th Cir. 1987) (considering an outstanding discovery motion enough to raise the issue). However, a district court may in its discretion deny a Rule 56(f) motion simply because the party opposing the motion for summary judgment has not complied with procedural formalities. See Brae Transp., Inc. v. Coopers & Lybrand,790 F.2d 1439, 1443 (9th Cir.1986) ("Failure to comply with the requirements of Rule 56(f) is a proper ground for denying discovery and proceeding to summary judgment."). 27. The Court notes that Defendants do not appear to have requested leave to amend their Answer in connection with their affirmative defenses. Pursuant to Federal Rule of Civil Procedure 15(a), Defendants could have amended their answer as a matter of course only within twenty days after their original answer was served. Defendants' Answer was served in March; therefore, the time to amend as a matter of course is long passed. Defendants may, however, amend their Answer with the consent of the adverse party in this action. Fed.R.Civ.P. 15(a). In the alternative, Defendants may seek leave of the Court to amend their Answer. Id. The Court reminds the parties that federal policy strongly favors determination of cases on their merits and that denial of leave to amend is permitted in only limited circumstances. The Court therefore strongly encourages the parties to consider stipulating to amendment should the issue arise. 28. The Court expresses no opinion at this time as to the validity of Defendants' "misuse of copyright" theory raised in opposition to Plaintiffs' Motion. Defendants raise this argument in connection with their second and third counter-claims, even though neither counter-claim specifically mentions "misuse." Instead, both of these counter-claims, as well as all of Defendants' other counter-claims, incorporate by reference the allegation that "Zorro Productions is seeking to use copyright, trademark, and unfair competition law in an inappropriate fashion in an attempt to obtain an unlawful monopoly not only in the character `Zorro,' but also other masked crusader characters and works." (Counter-Claim ¶ 48(E).) The Court notes, however, that to the extent that this allegation states a "misuse of copyright" theory, that theory must be pled as an affirmative defense, not as a counter-claim. Practice Management Information Corp. v. American Medical Ass'n,121 F.3d 516, 520 (9th Cir.1997). 29. The parties do not address the issue of standing in their briefs. Even though the parties have failed to raise this issue, the Court must address it. United States v. Hays,515 U.S. 737, 742, 115 S.Ct. 2431, 132 L.Ed.2d 635 (1995). 30. Defendants' unsupported comment to the effect that Plaintiffs have attempted to extort license fees from Defendants through "manifold registrations" is insufficient to allege injury. (Def. Opp'n 18.) 31. Even assuming Defendants were able to allege a cognizable Article III injury, it is unclear what effective redress, if any, the Court could offer Defendants under section 17203. Any claim for monetary relief is barred by the rule limiting recovery under section 17203 to restitution and injunctive relief. Cal. Bus. & Prof.Code § 17203; see MAI, 856 F.Supp. at 542. Defendants' prayer for relief on this counter-claim includes a prayer for damages, which is barred. Defendants also request restitution in connection with this counter-claim; however, it is unclear on what theory Defendants could seek restitution from Plaintiffs. MAI, 856 F.Supp. at 542. 32. The Court declines at this early stage in the litigation to consider dismissing Defendants' affirmative defenses on summary judgment grounds. 33. Notably, Defendants' ninth affirmative defense, which Plaintiffs do not seek to strike, asserts that "[t]he public does not associate the `Zorro' character with plaintiffs, and thus there can be no confusion in the public." (Answer ¶ 9.) The Court notes that this affirmative defense also appears to relate to Plaintiffs' trademark claim. 34. The Court notes that the issue whether ZPI owns a copyright in the character Zorro is not currently before the Court.
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