Anthony Johnson v. Storix, Inc., 16-55439

Background

Anthony Johnson, who drafted and signed a 2003 Annual Report, transferred “all assets” from Storix Software to Storix, Inc.; the Report stated assets were transferred as of February 24, 2003.
Johnson sued Storix for copyright infringement claiming the Annual Report did not satisfy 17 U.S.C. § 204(a) (writing requirement for copyright transfers).
The district court denied Johnson’s summary judgment motion, submitted the case to a jury, and the jury returned a verdict for Storix after a 5-day trial.
The district court denied Johnson’s motion for a new trial and awarded Storix attorney’s fees of $543,704; Johnson appealed the denials and the fee award.
The Ninth Circuit reviewed de novo the summary judgment and legal interpretations, reviewed jury instructions de novo for law and for abuse of discretion in formulation, and reviewed the fee award for abuse of discretion.

Issues

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether the Annual Report satisfies § 204(a)’s writing/signature requirement for transfer of copyright	Johnson: the Report is not a valid § 204(a) instrument as a matter of law	Storix: the signed Annual Report is a sufficient "note or memorandum" memorializing the transfer	Held: Annual Report qualifies as a signed memorandum meeting § 204(a); denial of summary judgment affirmed
Whether contemporaneity or form of signature is required by § 204(a)	Johnson: signature form/contemporaneity defeat validity	Storix: neither form nor strict contemporaneity is required; writing can confirm earlier oral transfer	Held: form and contemporaneity not dispositive; subsequent writing confirming earlier transfer is permitted
Whether meaning of "all assets" was a legal question for the court or factual for the jury	Johnson: interpretation was for the court; instruction allowing copyright to be included was error	Storix: term ambiguous; extrinsic evidence supports jury determination	Held: meaning could be ambiguous; extrinsic evidence and intent are factual issues for the jury; jury instructions proper
Whether the district court abused discretion in awarding fees and whether amount was reasonable	Johnson: fee award (and denial of relief) improper	Storix: fee award justified based on several factors including defendant’s success and deterrence	Held: awarding fees to Storix was not an abuse of discretion, but the amount ($543,704) was unreasonable; remanded to reconsider amount

Key Cases Cited

Perfect 10, Inc. v. CCBill L.L.C., 488 F.3d 1102 (9th Cir.) (standard of review for summary judgment and attorney’s fees under Copyright Act)
FBT Prods., LLC v. Aftermath Records, 621 F.3d 958 (9th Cir.) (rule on appealability of denial of summary judgment after full trial)
Jules Jordan Video, Inc. v. 144942 Canada Inc., 617 F.3d 1146 (9th Cir.) (subsequent writing can confirm an oral copyright transfer)
Valente‑Kritzer Video v. Pinckney, 881 F.2d 772 (9th Cir.) (writing can validate earlier oral license/transfer)
Radio Television Espanola S.A. v. New World Entm’t, Ltd., 183 F.3d 922 (9th Cir.) (parties’ intent governs sufficiency of writing under § 204(a))
Magnuson v. Video Yesteryear, 85 F.3d 1424 (9th Cir.) (purpose of § 204(a) to prevent inadvertent transfers and fraud)
Konigsberg Int’l, Inc. v. Rice, 16 F.3d 355 (9th Cir.) (discusses limits of acceptable writings under § 204(a))
Kirtsaeng v. John Wiley & Sons, Inc., 136 S. Ct. 1979 (U.S.) (requiring substantial weight to objective reasonableness when awarding fees)
Omega S.A. v. Costco Wholesale Corp., 776 F.3d 692 (9th Cir.) (factors for awarding fees under Copyright Act)
In re Bluetooth Headset Prod. Liab. Litig., 654 F.3d 935 (9th Cir.) (district court abuses discretion when using mechanical/formulaic approach to fees)
Fox v. Vice, 563 U.S. 826 (U.S.) (goal of fee-shifting is rough justice, not auditing perfection)
Welles v. Turner Entm’t Co., 503 F.3d 728 (9th Cir.) (extrinsic evidence and credibility may require remand when contract/copyright transfer intent is ambiguous)