Copyright Preemption of State Law Considered

contract claim, the elements of which the california supreme the complaint could possibly cure the deficiency. see miller of any profits and credit that might be derived from and the district court dismissed the claim accordingly. with appellees. joel r. weiner, of katten muchin rosenman llp, united states court of appeals 7945montz v. pilgrim films & television case violated the plaintiffs' exclusive rights to use and to are satisfied that they are. 7943montz v. pilgrim films & television idea and concepts"; and (2) that the defendants breached the sibly be cured only by adding an "extra element" to each for the show. according to the complaint, however, nbc finally, the plaintiffs argue that even if the district court piligian; jason conrad hawes; thus merely derivative of the rights fundamentally at issue: not challenge the district court's conclusion that it satisfies the fi channel based on the plaintiffs' materials. the show, cal- under � 301. id. claim. the district court ruled that the claim--which asserts plaintiffs' breach-of-implied-contract claim is preempted by exploiting those ideas and concepts, and profiting therefrom amend as a matter of course terminated in may 2007, before the district marks omitted).1 opinion the plaintiffs nevertheless insist that their breach-of- law claims alleging the unauthorized use of screenplays, vid- works of authorship, and to prepare works derived from the relating to their proposed show to representatives of nbc it could be concluded that the offeree voluntarily accepted the the offer and, in return, made an implied promise to pay for the plaintiffs presented their ideas for the "ghost opinion by judge o'scannlain of copyright owners specified by 17 u.s.c. � 106. a state-law are therefore satisfied that the district court did not abuse its the profits and credit does not "transform the nature of the defendants-appellees. preempted by federal copyright law. this deficiency can plau- properly dismissed their state-law claims, it should not have program. the rights asserted by the plaintiffs under the without the express consent of the plaintiffs." (emphases filed june 3, 2010 in april 2007, the defendants moved to dismiss the com- enough to "qualitatively distinguish" the plaintiffs' breach-of- which states that they made an offer only of partnership in the 7941montz v. pilgrim films & television claim, which we have already deemed preempted. indeed, the son is entitled to any such right or equivalent right plaint under federal rule of civil procedure 12(b)(6) for fail- payment on a sale, the breach of the alleged agreement in this qualitatively different from a copyright claim, we conclude contrary to the plaintiffs' assertion, however, the present [3] the plaintiffs' breach-of-implied-contract claim con- for the northern district of illinois, sitting by designation. [6] the complaint contends that "the plaintiffs' disclosure plaintiffs-appellants, tent with the challenged pleading could not possibly cure the of the action." laws, 448 f.3d at 1143 (internal quotation [8] in this case, the district court dismissed the plaintiffs' 7949montz v. pilgrim films & television their implied agreement not to disclose, divulge or exploit the is not a `responsive pleading' within the meaning of the close, divulge or exploit the plaintiffs' ideas and concepts ted). we concluded that the defendants' "implied promise to ter of course at any time before a responsive pleading is [2] section 106 confers upon copyright owners the exclu- discretion by denying the plaintiffs leave to amend. nel), "for the express purpose of offering to partner . . . in the dants an idea for a movie "with the understanding and copyright owners to use and to authorize use of their work. eos, and other materials in the production of a cable television ment industry, for the express purpose of offering to nbc universal, inc.; craig fmc-man the plaintiffs' disclosure of its concept," the defendants florence-marie cooper, district judge, presiding tary dismissal of the amended copyright claim with prejudice, angeles, california, argued the cause for the defendants- series. d.c. no. 7946 montz v. pilgrim films & television 2009 u.s. order 17 (mar. 26, 2009). rule 15(a), as amended, provides court's exercise of discretion denying leave to amend." plaintiffs' right to receive a share of the profits and credit is opinion led ghost hunters, stars jason hawes as the leader of a team claim is preempted under � 301(a) only if both conditions are 1956). to state a desny claim, the plaintiff must plead that he work, whether in partnership with the defendants or not. the that a party's right to amend as a matter of course terminates "21 days o'scannlain, circuit judge: challenged complaint. to state a viable desny claim, for served." we have previously said that "[a] motion to dismiss complaint confirms as much: lent" to the exclusive rights of copyright owners under � 106. court's ruling on the defendants' rule 12(b)(6) motion. it matters not originals. 17 u.s.c. � 106. section 106 also gives copyright profits and credit for use of their work, but only because they agreed that they "would not disclose, divulge or exploit the [a]ll legal or equitable rights that are equivalent to 787, 789 (9th cir. 1963). nevertheless, we have held that in iii concept. universal subsequently partnered with craig piligian and pil- we begin with the plaintiffs' breach-of-implied-contract that "[a] party may amend the party's pleading once as a mat- [5] as to the breach-of-confidence claim, the plaintiffs do "production, broadcast and distribution of the concept." we edly disclosed his idea to the defendants for the express pur- claims. in their view, the district court erred in ruling their 2004). as the district court correctly recognized, the com- and credit for their idea and concepts." the gravamen of the production, broadcast and distribution of the concept." the court elucidated in desny v. wilder, 299 p.2d 257 (cal. marks omitted). that "[b]y taking the plaintiffs' novel ideas and concepts, no. 08-56954 qualitatively different from the copyright rights. the state and the reasonable value of the work." grosso, 383 f.3d at after service of a responsive pleading or 21 days after service of a motion ited to whether the claim satisfies the second condition--that [1] the plaintiffs timely appeal the dismissal of their state- california, was also on the briefs. for the foregoing reasons, the judgment of the district court chologist, and daena smoller, a publicist, filed a complaint in breach-of-implied-contract and breach-of-confidence claims. ceived of the concept for a new reality television program fea- 967 (citing faris v. enberg, 158 cal. rptr. 704, 709 (ct. app. and come within the subject matter of copyright as specified tion, the state cause of action must protect rights which are by [17 u.s.c. �� 102 and 103]." second, the rights asserted argued and submitted motion in july 2007. the court concluded that the complaint alleged agreement in grosso violated the plaintiff's right to plaint is deficient because it alleges state-law claims that are by its terms, � 301(a) sets forth two conditions for preemp- of their ideas and concepts [was] strictly confidential," and no remaining claims to be adjudicated, the district court expected, as any copyright owner would, that their work ment' for preemption purposes." id. at 968. accordingly, we we consider whether federal copyright law preempts state- 7948 montz v. pilgrim films & television for the ninth circuit given that the plaintiffs' breach-of-confidence claim is not under both versions is ultimately the same: whether the district court before: diarmuid f. o'scannlain and richard c. tallman, ii tribution of the concept"; the defendants allegedly rejected authorship that are fixed in a tangible medium of expression authorization, to create (and then profit from) a new television ented their ideas for the `ghost hunter' concept to the ment not to disclose, divulge or exploit the plaintiffs' ideas hunter" concept to the defendants[ ] in confidence, other defendants. the complaint alleges that the defendants would not be used without their permission. the text of the v. yokohama tire corp., 358 f.3d 616, 622-23 (9th cir. tion. first, the state-law claim must assert rights in "works of added.) the nature of the implied contracts in the two cases challenge this ruling on appeal. our inquiry is therefore lim- plaint in grosso alleged that the plaintiff had given the defen- pilgrim films & television, inc.; 2:06-cv-07174- pose of offering it for sale; the defendants allegedly accepted makes clear that no allegation of other facts consistent with amendments to rule 15(a) took effect on december 1, 2009, and gail migdal title, of katten muchin rosenman llp, los denied leave to amend them. "we review strictly a district they would use magnetometers, infrared cameras, and other in august 2008, the plaintiffs amended their copyright granting a motion to dismiss before a responsive pleading is sive rights to reproduce, to distribute, and to display original any of the exclusive rights within the general scope plaintiffs' confidence "[b]y taking the plaintiffs' novel ideas 7944 montz v. pilgrim films & television premised on the fact that they would retain control over their may 4, 2010--pasadena, california expectation . . . that [he] would be reasonably compensated of the very rights contained in � 106--the exclusive rights of is thus fundamentally different. whereas the breach of the state-law claims without leave to amend before a responsive 15(a)(1)(b) (2010). thus, under the amended rule, the plaintiffs' right to argued the cause for the plaintiffs-appellants. joseph c. to the exclusive rights of copyright owners under � 106. we the plaintiffs justifiably expected to receive a share under state law must be "equivalent" to the exclusive rights in november 2006, plaintiffs larry montz, a parapsy- in any such work under the common law or statutes grosso involved a particular type of breach-of-implied- first condition for preemption. the only question before us is engaged in unauthorized use of the plaintiffs' materials, in a affirmed. 7940 montz v. pilgrim films & television rule." breier v. n. cal. bowling proprietors' ass'n, 316 f.2d b are governed exclusively by this title. . . . [n]o per- f.3d at 1144. the plaintiffs expected to receive a share of the abused its discretion by denying leave to amend. disclosure knowing the conditions on which it was tendered entered final judgment in favor of the defendants. of investigators who travel across the country to study para- [7] the proceedings in the district court were governed by paranormal activity. violation of their exclusive rights under federal copyright law. 7947montz v. pilgrim films & television the court dismissed the state-law claims with prejudice and comes within the "subject matter of copyright" and thus satis- their work. the plaintiffs' claim is "part and parcel of a copy- for the central district of california pursuant to the custom and practice of the entertain- is, whether the rights asserted under the claim are "equiva- *the honorable joan humphrey lefkow, united states district judge without leave to amend. are relevant here: (1) that "by producing and broadcasting" iv broadcast and distribution of the concept"; that "by accepting as a matter of course if "the allegation of other facts consis- one beyond the scope of � 106. envisioned by montz, each hour-long episode would follow deficiency." albrecht, 845 f.2d at 195 (internal quotation use of their work, but also their right to receive a share of "the 383 f.3d 965 (9th cir. 2004), compels a different conclusion. owners under � 106--namely, the exclusive rights to use and tribution, display, and preparation. id. "to survive preemp- counsel implied-contract claim contains an "extra element" that distin- claim must have an extra element which changes the nature turing a team of "paranormal investigators." as allegedly clear, the plaintiffs' expectation of profits and credit was briefs. graham b. lippsmith, of girardi keese, los angeles, devices to investigate (and occasionally debunk) reports of under rule 12(b), (e), or (f), whichever is earlier." fed. r. civ. p. federal district court. they claimed that in 1981, montz con- 1979)). "[m]irror[ing] the requirements of desny," the com- plaintiffs' ideas and concepts without the express consent of fies the first condition for preemption. the plaintiffs do not ply echoes the allegations of the breach-of-implied-contract ure to state a claim upon which relief can be granted. the universal, pilgrim films, piligian, hawes, and ten unknown implied-contract claim from a copyright claim. laws, 448 pay" for use of the plaintiff's idea constituted "an `extra ele- normal activity. held that the plaintiff's desny claim survived preemption is example, the plaintiffs would have to allege that they offered of any state. whether the rights asserted under the claim are "equivalent" howard b. miller, of girardi keese, los angeles, california, f.3d at 1144. the plaintiffs cannot effect such a transforma- tion, however, without alleging facts inconsistent with the authorship that are fixed in a tangible medium of claim is that the defendants used the plaintiffs' work, without use of the idea. here, by contrast, the plaintiffs allegedly dis- the plaintiffs' exclusive rights to use and to authorize use of [4] the mere mention of such a right, however, is not copyright owners under � 106. rights in screenplays, videos, and other tangible media-- right claim," and the presence of a right to receive a share of angeles, california, were also on the brief. partner with the defendants in the production, broad- of copyright as specified by section 106 in works of grim films & television, inc., to produce a series on the sci- out obtaining the plaintiffs' consent"; and that "by producing law breach-of-implied-contract and breach-of-confidence and concepts, exploiting those ideas and concepts, and profit- the plaintiffs brought various causes of action against nbc expression and come within the subject matter of which version of the rule we apply here, however, because the question larry montz; daena smoller, gloria c. franke, of katten muchin rosenman llp, los district judge.* and broadcasting the concept," "[t]he defendants breached closed their work to the defendants "for the express purpose universal, inc., and the sci-fi channel (now the syfy chan- district court granted in part and denied in part the defendants' b universal television networks, profits and credit for their idea and concepts." according to offeree for sale, and did so under circumstances from which authorize use of their work--rights equivalent to those of of offering to partner . . . in the production, broadcast and dis- satisfied. see laws v. sony music entm't, inc., 448 f.3d 1134, ducing and broadcasting" ghost hunters, the defendants claim that "transform[s] the nature of the action." laws, 448 1137-38 (9th cir. 2006). former federal rule of civil procedure 15(a), which provided case is distinguishable from grosso. there, the plaintiff alleg- implied contract are thus equivalent to the rights of copyright offering to partner with the defendants in the production, federal copyright law, and that the district court properly dis- apply to pending proceedings "insofar as just and practicable." order, v. confidential relationship with the plaintiffs." such claim sim- dant. the parties, however, subsequently stipulated to volun- albrecht v. lund, 845 f.2d 193, 195 (9th cir. 1988). guishes it from a copyright claim. they contend that "by pro- in addition, it alleges several state-law claims, two of which allegation would be contrary to the challenged complaint, owners the exclusive right to authorize such reproduction, dis- 7942 montz v. pilgrim films & television copyright as specified by sections 102 and 103 . . . missed the claim. ghost hunters, the defendants breached an "implied agree- (emphasis added.) as this paragraph of the complaint makes the team's members to a different real-world location, where plaintiffs' ideas and concepts without compensation and with- ing therefrom to the plaintiffs' exclusion." to share with the plaintiffs . . . the profits and credit for their circuit judges, and joan humphrey lefkow, the complaint alleges that between 1996 and 2003, the their work for sale. see grosso, 383 f.3d at 967. but such an cast and distribution of the concept. accordingly, for publication alleged breach of confidence stems from an alleged violation 1 to the plaintiffs' exclusion, the defendants breached their claims preempted by 17 u.s.c. � 301(a), which provides: action." laws, 448 f.3d at 1144. we therefore hold that the that federal copyright law preempted the plaintiffs' state-law the plaintiffs, and to share with the plaintiffs . . . the profits such findings were necessary because the court's decision written findings in support of its denial of leave to amend, no appeal from the united states district court plaintiffs presented screenplays, videos, and other materials 7937 violated not only their exclusive rights to use and to authorize and concepts without the express consent of the plaintiffs, and that it was also properly dismissed. served, a district court may cut off a party's right to amend the offer but, in return, made an implied promise "not to dis- i for its use by defendants." id. (internal quotation marks omit- them, the right to receive a share of the profits and credit is the exploitation of [their] ideas and concepts for the the plaintiffs counter that grosso v. miramax film corp., pleading was served. although the district court did not make sists of the following allegations: that "[t]he plaintiffs pres- gjonola, of girardi keese, los angeles, california, filed the alleged facts sufficient to state a federal copyright claim, but claim and added universal television networks as a defen- representatives were allegedly not interested in the concept los angeles, california, filed a brief. gail migdal title and to authorize use of their work. a "prepared the work [at issue], disclosed the work to the defendants[ ] in confidence . . . for the express purpose of