Paula Petrella v. Metro-Goldwyn-Mayer, Inc. , 584 F. App'x 653 ( 2014 )

FILED
NOT FOR PUBLICATION AUG 22 2014
MOLLY C. DWYER, CLERK
UNITED STATES COURT OF APPEALS U.S. COURT OF APPEALS
FOR THE NINTH CIRCUIT
PAULA PETRELLA, an individual, No. 10-55834
Plaintiff - Appellant, D.C. No. 2:09-cv-00072-GW-
MAN
v.
METRO-GOLDWYN-MAYER, INC., a MEMORANDUM*
corporation; METRO-GOLDWYN-
MAYER STUDIOS, INC., a corporation;
METRO-GOLDWYN-MAYER HOME
ENTERTAINMENT, LLC, a limited
liability company; METRO-GOLDWYN-
MAYER HOME ENTERTAINMENT
DISTRIBUTION CORPORATION, a
corporation; UNITED ARTISTS
CORPORATION, a corporation; 20TH
CENTURY FOX HOME
ENTERTAINMENT, LLC, a limited
liability company,
Defendants - Appellees.
PAULA PETRELLA, an individual, No. 10-55853
Plaintiff - Appellee, D.C. No. 2:09-cv-00072-GW-
v. MAN
METRO-GOLDWYN-MAYER, INC., a
*
This disposition is not appropriate for publication and is not precedent
except as provided by 9th Cir. R. 36-3.
corporation; METRO-GOLDWYN-
MAYER STUDIOS, INC., a corporation;
METRO-GOLDWYN-MAYER HOME
ENTERTAINMENT, LLC, a limited
liability company; METRO-GOLDWYN-
MAYER HOME ENTERTAINMENT
DISTRIBUTION CORPORATION, a
corporation; UNITED ARTISTS
CORPORATION, a corporation; 20TH
CENTURY FOX HOME
ENTERTAINMENT, LLC, a limited
liability company,
Defendants - Appellants.
On Remand from the United States Supreme Court
Before: W. FLETCHER and FISHER, Circuit Judges, and ZOUHARY, District
Judge.**
On remand from the Supreme Court, the defendants argue that even though
the plaintiff’s claim for copyright infringement is not barred by laches, the district
court’s grant of summary judgment in their favor should nevertheless be affirmed
on alternative grounds. We vacate the grant of summary judgment on the
**
The Honorable Jack Zouhary, District Judge for the U.S. District Court for
the Northern District of Ohio, sitting by designation.
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plaintiff’s copyright claim and remand for further proceedings consistent with this
decision.1
1. Because the plaintiff, Paula Petrella, failed to timely renew the copyright
term for the book and the 1973 screenplay, her copyright claim must rest on the
1963 screenplay. See 17 U.S.C. § 304(a)(4)(A). We reject the defendants’
argument that Petrella’s failure to renew the other two works makes baseless her
claim for copyright infringement of the 1963 screenplay. First, the scope of the
defendants’ license to use the content of the book under 17 U.S.C. § 304(a)(4)(A)
turns on the scope of copyright protection in the book. In turn, the scope of
copyright protection in the book depends on whether the 1963 screenplay was
based on the book or vice versa: if the book was original and the 1963 screenplay
was a derivative work based on it, then all of the book is entitled to copyright
protection, but if the book was a derivative work based on the 1963 screenplay,
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Nothing in the Supreme Court opinion affects our holdings that Petrella’s
claims for unjust enrichment and for an accounting are barred by laches, and that
the district court did not abuse its discretion by denying the defendants’ motions
for attorney’s fees and for sanctions. See Petrella v. Metro-Goldwyn-Mayer, Inc.,
134 S. Ct. 1962 (2014). For the reasons stated in our earlier opinion, we therefore
affirm the grant of summary judgment on those two claims, and affirm the district
court’s denial of the defendants’ motion for sanctions. See Petrella v. Metro-
Goldwyn-Mayer, Inc., 695 F.3d 946, 956-57 (9th Cir. 2012). We also affirm the
district court’s denial of the defendants’ motion for attorney’s fees. That motion is
premature because litigation of Petrella’s copyright claim is ongoing.
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then only the new elements in the book are entitled to copyright protection. The
parties vigorously dispute this issue. See infra. Therefore, the defendants’ renewal
argument is encompassed by the parties’ other arguments, and does not provide an
independent basis for precluding Petrella from litigating her claim for copyright
infringement of the 1963 screenplay. Second, the record does not support the
defendants’ assertion that all three works are “virtually indistinguishable from one
another.” This argument therefore at most limits the scope of Petrella’s copyright
interest to any protectible elements that are in the 1963 screenplay, but not in the
book or the 1973 screenplay. For both of these reasons, we do not affirm the grant
of summary judgment on this alternative ground.
2. Although the title page to the 1963 screenplay stated that it had been
written by Frank Petrella “in collaboration with Jake La Motta,” its copyright
registration listed Frank Petrella as the claimant and sole author. Accordingly,
whether the 1963 screenplay was a work of sole or joint authorship is a genuinely
disputed material fact that precludes affirming the grant of summary judgment on
this basis. See Fed. R. Civ. P. 56(a).
3. Frank Petrella and Jake La Motta represented in the 1976 agreement that
the book was original and had not been copied or adapted from any other work, but
the book was published seven years after the 1963 screenplay was registered, and
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includes references to events occurring after 1963. Therefore, on this record, the
district court correctly determined there is a genuine dispute whether the 1963
screenplay was based on the book or vice versa.
4. The district court erred, however, when it concluded the defendants had
not made the argument that Petrella should be estopped from contradicting her
father’s representations in the 1976 agreement that the book was original. In fact,
the defendants argued: “Plaintiff should be estopped, as a threshold matter, from
contradicting her father’s written contractual representations, because she is his
privy and is suing based on his alleged rights.” We decline to exercise our
discretion to decide this issue in the first instance, and instruct the district court to
address this argument on remand.
5. We also decline to reach the remaining issues argued by the defendants.
If the district court concludes Petrella is estopped from arguing that the book was
based on the 1963 screenplay, the scope of the substantial similarity comparison
will be significantly affected, and the question of whether the book’s copyright
protection extends to elements incorporated from the 1963 screenplay would
become moot.
6. However, the district court’s substantial similarity analysis did not apply
the extrinsic test required by our precedent – perhaps because summary judgment
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turned on a different ground. See Benay v. Warner Bros. Entm’t, Inc., 607 F.3d
620, 624 (9th Cir. 2010) (noting that “[o]n a motion for summary judgment, we
apply . . . the extrinsic test,” and explaining that “[t]he extrinsic test is an objective
test based on specific expressive elements: the test focuses on articulable
similarities between the plot, themes, dialogue, mood, setting, pace, characters, and
sequence of events in two works” (quoting Kouf v. Walt Disney Pictures &
Television, 16 F.3d 1042, 1045 (9th Cir. 1994)) (internal quotation marks
omitted)). Accordingly, after it resolves the estoppel argument on remand, the
district court shall apply the extrinsic test to compare the film against the protected
elements, if any, covered by Petrella’s copyright interest. See id. at 624-25.
We therefore affirm the grant of summary judgment on Petrella’s unjust
enrichment and accounting claims, vacate the grant of summary judgment on her
copyright claim and affirm the denial of the defendants’ motions for sanctions and
attorney’s fees. We remand for further proceedings, during which the district court
shall consider the defendants’ estoppel argument and conduct a substantial
similarity comparison applying the extrinsic test.
Each party shall bear its own costs on appeal.
AFFIRMED IN PART, VACATED IN PART AND REMANDED.
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