Ryan v. Editions Ltd. West, Inc. , 417 F. App'x 699 ( 2011 )

FILED
NOT FOR PUBLICATION MAR 03 2011
MOLLY C. DWYER, CLERK
UNITED STATES COURT OF APPEALS U .S. C O U R T OF APPE ALS
FOR THE NINTH CIRCUIT
VICTORIA RYAN, No. 06-17364
Plaintiff - Appellant, D.C. No. CV-06-04812-PVT
v.
MEMORANDUM *
EDITIONS LIMITED WEST, INC., a
California corporation; et al.,
Defendants - Appellees.
VICTORIA RYAN, No. 09-16287
Plaintiff - Appellant, D.C. No. 5:06-cv-04812-PVT
v.
EDITIONS LIMITED WEST, INC., a
California corporation and ARTSELECT,
INC., a Delaware corporation,
Defendants - Appellees,
and
ENVIRONMENTAL GRAPHICS, INC., a
Minnesota corporation; et al.,
*
This disposition is not appropriate for publication and is not precedent
except as provided by 9th Cir. R. 36-3.
Defendants.
Appeal from the United States District Court
for the Northern District of California
Patricia V. Trumbull, Magistrate Judge, Presiding
Argued and Submitted February 15, 2011
San Francisco, California
Before: NOONAN, O’SCANNLAIN, and TROTT, Circuit Judges.
Victoria Ryan, a visual artist, appeals the district court’s grant of summary
judgment in favor of defendant Editions Limited West (“ELW”) on her claims for
(1) contributory and vicarious copyright infringement, (2) breach of contract, (3)
unfair competition, and (4) slander of title. She also challenges various discovery-
related rulings and the denial of her anti-SLAPP motion to strike ELW’s
counterclaim for defamation.
We review the district court’s grant of summary judgment de novo, drawing
all inferences in favor of the nonmoving party. Noyes v. Kelly Servs., 488 F.3d
1163, 1167 (9th Cir. 2007). We review the district court’s decision to deny
discovery for abuse of discretion. Hallett v. Morgan, 296 F.3d 732, 751 (9th Cir.
2002).
First, Ryan argues that ELW is liable for copyright infringement based on
ELW’s licence to ArtSelect to make unauthorized reproductions of Ryan’s original
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pastels. At the time ArtSelect made its unauthorized reproduction of Primavera I,
both elements of contributory copyright infringement were present. See Perfect 10,
Inc. v. Visa Int’l Service Ass’n, 494 F.3d 788, 795 (9th Cir. 2007). ELW knew that
ArtSelect was producing and selling unauthorized canvas transfers of Ryan’s
works. ELW contributed to ArtSelect’s direct copyright infringement by granting
permission to ArtSelect to make canvas transfers and selling ArtSelect the poster it
used to create the canvas transfer. Ryan also presented evidence of the elements of
vicarious copyright infringement. See Metro Goldwyn-Mayer Studios, Inc. v.
Grokster, Ltd., 545 U.S. 913, 930 (2005). ELW’s CEO, Michael Jakola, stated in a
declaration that ELW sold ArtSelect the poster of Primavera I that it used to make
the infringing canvas transfer. At the time of the poster sale, ArtSelect had explicit
authorization from ELW to use the poster to produce a canvas transfer. ELW did
not exercise its right to stop ArtSelect from copying the poster. Insofar as the
district court found that Ryan could not prove damages, we note that ArtSelect’s
profits from the infringement were at least partially caused by ELW’s unauthorized
license of Ryan’s works. See Mackie v. Rieser, 296 F.3d 909, 911 (9th Cir. 2002).
Accordingly, Ryan raised a triable issue as to whether she is entitled to judgment
against ELW for copyright infringement.
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Second, Ryan challenges the district court’s grant of summary judgment on
her breach of contract claim. The district court properly found that Ryan did not
adduce any evidence of damages proximately caused by ELW’s breach of contract.
Third, Ryan challenges the district court’s ruling that the Copyright Act
preempts Ryan’s unfair competition claim against ELW. The Copyright Act
expressly preempts related state law claims based exclusively on rights protected
under the Act. See Kodadek v. MTV Networks, Inc., 152 F.3d 1209, 1212 (9th Cir.
1998). Ryan argues that some allegations in her complaint involve rights not
protected under the Act; however, the allegations to which she points involve the
encouragement or inducement of copyright infringement, which is an element of
the federal contributory copyright infringement claim. See A&M Records, Inc. v.
Napster, Inc., 239 F.3d 1004, 1019 (9th Cir. 2000). The Copyright Act therefore
preempts Ryan’s unfair competition claim.
Fourth, Ryan challenges the district court’s grant of summary judgement on
her slander of title claim. The district court correctly determined that Ryan did not
adduce any evidence that she incurred attorneys’ fees in clearing her title or
suffered any other pecuniary loss resulting from slander of title. See Appel v.
Burman, 206 Cal. Rptr. 259, 262-63 (Ct. App. 1984). Therefore, we reject Ryan’s
challenge.
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Ryan also challenges the district court’s denial of her motion to compel
further written discovery responses and its denial of Ryan’s requests for extensions
of the deadline to file motions to compel discovery and the discovery cutoff
deadline. The district court did not abuse its broad discretion in managing
discovery when it denied these discovery-related motions. See Hallett, 296 F.3d at
751.
Ryan argues that the district court improperly denied her request for a
permanent injunction against ELW and improperly determined that she was not the
prevailing party under her contract with ELW. If the district court finds ELW liable
for contributory or vicarious copyright infringement, it should reconsider whether
Ryan is the prevailing party under the broad language of the contract, and whether
she is entitled to a permanent injunction against ELW. See MAI Sys. Corp. v. Peak
Computer, Inc., 991 F.2d 511, 520 (9th Cir. 1993) (“As a general rule, a permanent
injunction will be granted when liability has been established and there is a threat
of continuing violations.”).
Ryan challenges the district court’s denial of her anti-SLAPP motion to
strike ELW’s counterclaim. Under the collateral order doctrine, we have
jurisdiction to review the denial of an anti-SLAPP motion to strike brought under
California law. Batzel v. Smith, 333 F.3d 1018, 1024 (9th Cir. 2003). The district
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court did not abuse its discretion by denying Ryan’s anti-SLAPP motion in order to
permit ELW to conduct discovery essential to its opposition. See Metabolife Int’l,
Inc. v. Wornick, 264 F.3d 832, 846 (9th Cir. 2001).
We AFFIRM the district court’s denial of Ryan’s anti-SLAPP motion,
REVERSE the district court’s grant of summary judgment on Ryan’s vicarious and
contributory liability claims against ELW and REMAND for further proceedings
consistent with this disposition. Each party shall bear its own costs on appeal.
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