*1 BAP, hold, Arnold as did the provide plan
Baker FmHA with the does equivalent of its claim
indubitable secured
required by Bankruptcy Code. judgment reversing BAP
bankruptcy confirming plan court’s order
is AFFIRMED. MAGNUSON,
John John d/b/a
Associates, Plaintiff-Appellee-Cross-
Appellant, YESTERYEAR,
VIDEO Defendant-
Appellant-Cross-Appellee. 94-16787,
Nos. 94-17019 and 95-15369. Appeals,
United States Court
Ninth Circuit.
Argued April and Submitted 1996.
Decided June *2 Hy- Hyman, Allen Law Offices
Allen man, California, City, for defendant- Studio appellant-eross-appellee. Cohen, AND
Thomas A. Law Offices Thomas FACTUAL PROCEDURAL Francisco, California, Cohen, A. BACKGROUND San plaintiff-appellee-eross-appellant. rights “Lenny appeal This involves the
Bruce,” film black-and-white created *3 Magnuson and John the American satirist Lenny film, In the which Bruce. was shot 1965, night in Magnuson a New York club in sought convey Bruce to and Bruce’s version gave of the events that to his arrest rise NELSON, obscenity. conviction The film was FERGUSON, and for Before: D.W. produced by corporation, the FERNANDEZ, California Judges. and Circuit
Imagination, (“Imagination”), Inc. of whiсh Magnuson the was chief executive officer. NELSON; by Judge Opinion D.W. Imagination paid production post- the by Judge Dissent FERNANDEZ. production expenses employed the cam- NELSON, Judge: film, D.W. Circuit era and sound crews for the while of Bruce the sole author the material OVERVIEW existing used film. There is no writ- (“VY’) Yesteryear appeals Video dis- Bruce, agreement Magnuson ten between holding court’s of Magnu- trict favor John Imagination concerning rights to film. Magnuson son John Associates for d/b/a Bruce, Following suggestion a made copyright infringement the Copyright under Magnuson up corporatiоn, set Columbus 4, 320, 1909, ofAct 1909. Act of March ch. Productions, (“Columbus”), pur- Inc. for the (codified 17 Stat. as amended at pose of owning the film. Columbus was cre- § Mag- seq.). et VY contends that U.S.C. 10,1966, subsequent ated October Len- standing lacks for copyright nuson to sue creation, ny Bruce’s At of death. the time its infringement because he does own Magnuson was sole shareholder and chief issue, rights to the work film entitled of executive officer Columbus. On October “Lenny argues Bruce.” VY also 17, 1966, Magnuson screening public held a refusing at- erred award of the film in San Francisco order torney’s part post-оffer fees as of costs under copyright protection secure Copy- -under the 68, Fed.R.Civ.P. 68. Under Rule right Act applied of then 1909. Columbus rejects a settlement offer made at least film, copyright registration listing for the days prior pay trial post-offer ten must film, itself the “author” and of “owner” of if damages do costs offeror awarded March, copyright registration secured Magnu- not exceed the amount of offer. 1968. cross-appeals son the district court’s refusal The district court found that Columbus attorney’s him to award under 17 fees U.S.C. performed Magnuson often business as John 505, permits which the district court to Magnuson changed Associates and that attorney’s award costs and “in fees its discre- Magnuson name to John Columbus Associ- tion.” He also asserts that VY is not entitled Magnuson, ates in the 1970s. Aside from to costs under Rule 68 because the offer was any had regular employees. Columbus never defectively served. seventies, Magnuson In the Len- licensed the distributors, affirm ny We the decision of the district Bruce film a number Films, respect Magnuson’s copyright including with in- Kino Internation- Times/Life al, fringement Virgin Video, claim and the denial VYs re- EEN and Rhino Home Vid- quest attоrney’s pursuant fees agreement concerning to Rule 68. eo. He also made an We reverse royalties the district court’s award of VYs the division of with the Bruce estate agreements We costs. remand reconsideration on in 1975. These were made un- question Magnuson whether should have der the name of Associates. John attorney’s pursuant suspend- been awarded fees On October Columbus was pay corporate U.S.C. ed for failure to California 3,1993, attorney’s Copyright fees award a Memo- On March taxes. franchise Rights Co- Act is for abuse of discretiоn. Fan- Assignment from reviewed randum of Productions, tasy, Fogerty, Inc. Inc. to John lumbus (9th Cir.1993), Copyright grounds, Office. rev’d on with the U.S. other was recorded 1023, 127 114 S.Ct. L.Ed.2d U.S. Lenny copy purchased a VY (1994). include a which did not Bruce film the U.S. conducted a search with notice. VY any ANALYSIS to determine whether
Copyright Office had “Lenny Bruce Concert” film entitled Magnuson’s Right to Copyright I. Sue for question although the film in registered, been Infringement gone by that title. The search has never *4 argues in VY that the district erred VY, results, concluding that and produced no finding Magnuson owner the that is the of in do- Lenny public Bruce film was the the copyright Lеnny film that to the Bruce and tape film main, marketing the on video began copy- for standing he therefore has to sue The was not authorized in video 1979. (1) right infringement. VY that contends notice Magnuson copyright and contains a copyright was valid of there not a transfer VY. copyright belonging to claiming a 1983 (2) Columbus; Lenny to from Bruce and in- copyright filed action for Magnuson an Lenny if valid from even was a transfer there against and trial was sched- fringement VY Columbus, not a Bruce to there was valid 7, 1994, pre- a begin uled on March with to Magnuson transfer from Columbus to John 2, March 1994. On trial set for сonference argument is without merit. Associates. VY’s 22, 1994, Ex- February VY sent Federal (“fax”) of offer press facsimile an and Lenny Bruce to Colum- A. Transfer from for judgment pursuant to 68 Fed.R.Civ.P. bus $3,000. attorney rejected the Magnuson’s untimely, having been it offer because was argues Lenny alone was the VY that Bruce days the than before less ten served Lenny of film and that author the Bruce held trial date. The district court scheduled ownership Imagination of the never shared Magnuson copyright the claim in of on favor film as Even if copyright the a coauthor. to damages. rejected in It and awarded $375 film, Imagination a to the copyright did hold request attorney’s pur- Magnuson’s for fees asserts, copyright that it did transfer VY rejected It 17 505. also suant to U.S.C. on prior publication to the film’s to Columbus to attorney’s pursuant for request fees VY’s 17,1966. October but awarded costs Fed.R.Civ.P. rule, finding been that the offer had that correctly held that The district court hold- appeals district court’s timely. VY the applicable Act of 1909 is the Copyright the infringement ing respect copyright with copyright was in this case because the law attorney’s request and of for its denial VY’s adoption рrior in the secured Magnuson challenges cross-appeal, fees. On Ranger v. Act. Lone Television See of and the award costs to VY district court’s Corp., F.2d 719-20 Program Radio attorney’s fees. request the of its denial Cir.1984) Act (applying the 1909 where original to 1954 and copyright dated back the
STANDARD OF REVIEW 1979). alleged infringement place the took Act, copyright law the a common find the district court’s Under We review or authors of work clear vested the author ings following a bench trial for of fact of Copyright Act time of its creation. de novo. the and its conclusions lаw error Copy 1909, § 52(a); reprinted in 5 Nimmer Price v. States Fed.R.Civ.P. United Nimmer) (hereinafter 6; (9th Cir.1994). Appendix see 1011, 1021 right We Navy, F.3d A § 2.02 at 2-18.1. construc 1 Nimmer novo district court’s review de the production of paid County and Herrington commissioned Rule 68. tion of (9th Cir.1993). author and held Sonoma, work considered an F.3d Lin- the work. copyright common law court’s decision as to whether Gertler, Magnuson Hardware v. B. Transfer from Columbus to Brook Builders (9th Cir.1965). 298, 300 argues next even if held VY Columbus copyright, owner- valid it did transfer Here, the district court found that ship copyright Magnuson before Imagination deci and Bruce made mutual suspеnded in Columbus was film, sion that Bruce took “clear to create the asserts, copyright the true owner of the directing undertaking” initiative Columbus, which, suspended corpora- aas (the filming, Magnuson and that owner tion, capacity does not have the Cal. sue. Imagination) produced paid film and VY challenges Bus. & Tax.C. 23301. testi- equipment produc the crews and used its mony by Magnuson “[a]t offered findings clearly tion. Because these are not dissolution, Productions, time of Columbus erroneous, properly the district court held assigned right, Inc. all title and interest Imagination Bruce аnd both held Lenny film] [to Bruce original copyright in film as common law John John d/b/a commissioning parties. validity It Associates.” also contests the of a Assignment February Memorandum dated Lenny found The district court also 1, 1993, registered with the United film to Bruce transferred his interest *5 Copyright in States Office which the transfer subsequently, Imagina- Imagination and that from to is docu- Columbus John copyright tion law to transferred the common argues VY that there is mented. no evidence copyrights “Common law could Columbus. therefore, that Columbus ever dissolved and orally, byor implication be either transferrеd that not the transfer could have occurred. 1 parties.” from the conduct of the Nimmer Data, § (citing at 5-46 Real Estate Act, 5.03[B] Copyright the 1976 the Like Co., Inc. v. F.2d Sidwell 809 374 provided Copyright assign Act of 1909 that Cir.1987)). The district court that concluded a in copyright ment of had to be writ made suggesting However, in that ing. Copyright create a new 1909 Act of corporation purpose owning for the of the case law holds under circum that some film, prior grant a oral that Bruce indicated his intent to transfer stances is confirmed addition, by writing a later rights Imagination. his In it becomes valid as (Co- grant, writing thе oral even if by time of the is creating corporation held that such subsequent litigation to the initiation of lumbus) transferring the film the copyright infringement. the See 3 Nimmer entity, Imagina- corporate books of the new 10-39; at 10.03[A] Valente-Kritzer Video tion effected a valid transfer of the common (9th Cir.1989); Pinckney, v. 881 F.2d 775 copyright law to Columbus. Toys, Eden Inc. Undergarment v. Florelee (2d Cir.1982). Co., 36 The district found court that after the ownership transfer Columbus in rights of Toys, provi- In Eden the court addressed film, Lenny published the Bruce Columbus analogous the sion in 1976 Act one at to the work, thereby losing the its common law hеre, which provides issue that an exclusive Act, copyright. Under the 1909 common law copyright only conveyed license can be copyright pub terminated a work when writing. 697 of purpose F.2d at 36. The the lished, point eligi at which work the became requirement writing, that a transfer be the copyright. 1 statutory ble for federal See explained, protect copyright was to the § 2.02 Nimmer at 2-18.1. then Columbus persons fraudulently claiming holder from applied statutory for and 1968 a received However, out, pointed hold licenses. it registered copyright, in the name of Colum сopyright appears where “the holder to have bus. has VY offered no evidence that indi matter, dispute with little its licensee on this findings cates the district court’s on these permit it would be a third anomalous clearly transfers were Co erroneous infringer provision against invoke this the statutory copy Thus, held, lumbus did not hold a valid an licensee.” Id. oral right by as of 1968. it transfer was valid where was affirmed
1429
days prior
[actual]
than ten
to the
commence-
transfer execut-
subsequent
of
memorandum
However,
ment
the trial.”
Id.
of
by
owner.
ed
position
court declined
take а
to wheth-
particu
Toys is
logic of Eden
by
Express
permitted
er
Federal
service
case,
con
in this
where the
larly compelling
procedure
or local
of civil
federal
rules
Magnuson as
John
CEO
veyance is between
compu-
might
such service
affect the
how
Columbus,
Magnuson as owner
and John
of
tation
the date
should
of
which
offer
Thus, we find
Magnuson Associates.
of John
any
have
served.
It also failed to cite
been
conveyance satis
of
the memorandum
support
proposition
case law
of
requirement of
writing
fied
pro-
actual notice suffices where service of
Act,
it
though was not exe
Copyright
even
cess is defective.
Further,
transfer.1
cuted
the time
find
made
factual
the district court
several
offers,
involving
In
Rule
cases
clearly
indicating
not
ings that are
erroneous
comply
process
with Fed.
service
must
did,
fact,
copy
transfer its
that Columbus
5(b).2
Brienen, 801
R.Civ.P.
Grosvenor v.
in the
Magnuson Associates
right
to John
(7th Cir.1986)
(holding
that an
particular,
the district court
seventies.
satisfy
require
oral
not
offer does
service
Magnuson changed
name
found that
5(b)
68);
Rule
in the context of Rule
in ments of
Magnuson Associаtes
to John
Columbus
Sonoma,
County
F.Supp.
seventies,
licensing
v.
making several
Stewart
(N.D.Cal.1986).
agreement in
concluding
an
fax does
agreements and
Service
5(b).
Bruce
name.
satisfy
with the
estate
Fed.R.Civ.P.
Mushroom
dis
Mushrooms,
Inc.,
of whether Columbus
regardless
Monterey
v.
Assocs.
seventies,
court did
the district
(N.D.Cal.1992),
solved
U.S.P.Q.2d 1304
1992 WL
clearly
when
found
Columbus
err
Governors,
*4; Salley
Board
*6
copyright
to John
the
transferred
417,
(M.D.N.C.
of N.C., 136
419
Univ.
F.R.D.
result, Magnuson
a
is the
As
Associates.
1991). Thus,
correctly
the district court
held
is entitled to sue
party in interest and
real
process by
that
of
fax of
Rule 68
service
the
infringement.
inadequate,
though Magnuson
offer
even
was
the
apparently
copy
did
a faxed
of
receive
II. Service VY’sRule 68 Offer
erred, however, in
The district court
offer.
Rule
of-
VY’s
68
contends that
by
holding that service of the offer
Federal
therefore,
served,'
defectively
fer was
Express
adequate.
eases
was
The handful of
attorney’s
nor
fees should
that
costs
neither
by
that have addressed the issue
service
agree.
We
be awarded VY.
entirely from
Express come almost
Federal
circuit,
they
courts
of this
outside
that while service
The district court held
Therefore,
pro
are
consistent.
we will
by
inadequate,
of the
by fax
service
offer
was
the
law that
vide a brief overview of
scant
acceptable
Express was
because
Federal
area.
received more
exists in this
reality
“the
that the offer was
occurred,
Int'l,
Rice,
ing
actually
or the
Konigsberg
whether the transfer
Inc.
355
Further,
1994)
distinguishable
from this case.
to the
Cir.
is
on which it occurred.
terms
There,
alleged
was between the au
might
transfer
language
Konigsberg
that some
extent
party,
author and the
thor
where the
and another
contemporaneous
interpreted
requiring
as
a
be
disputed
party
the transfer had
other
whether
case,
writing
it is
even under the facts
this
occurred,
if
and the terms on which it
occurred
clearly dicta.
subsequent writing on
did.
which the
it
The
directly acknowledge
plaintiffs
did not
relied
5(b) provides
part:
in relevant
2. Fed.RXiv.P.
any specific
indicate
a transfer had occurred or
writing
problem
with the
terms.
attorney
upon
party
upon the
shall
or
a
Service
it was
con
not so much that
case was
attorney
by delivering
copy to
or
a
be made
temporaneous
agreement
with the
but that it
mailing
attоrney
party
to the
or
or
it
by
writing contemplated
type
section
"not the
address,
attorney’s
party’s
or
last known
provide any
late to
204" because it “came far too
known,
or,
by leaving with
if
address is
no
parties’
disputes.”
point
license
reference
by mail is
Service
the clerk
court....
Here,
dispute
no
be
AFFIRMED subject IN REVERSED IN touched on attempts this were PART, AND away REMANDED. rights. Konigs- take the author’s See may attorney's prevailing part also award a reasonable fee to the of the costs. (2d Inc., Cir.1982), (attempt that a simi- to claim
berg, 16 F.3d at years point later way and a half lar cases. Those cases toward written three letter writing); requisite of this Ko- was the Valente-Kritzer destabilization area law. Pinckney, nigsberg right v. 774-75 was Video and should be followed. denied, Cir.1989), contrary copyright’s cert. U.S. could create course (1990) (claim 107 L.Ed.2d S.Ct. cockatrice. lawyer requisite a letter from a respectfully I dissent. requires writing—
writing). The rule Konigsberg’s pro Congress’s rule and rule — thing is worst tects authors. What essentially contemporaneous happen if an
can Well,
writing required? is in the absence prior owner will be deemed writing copyright; protected. he will be
to have the that, subjected only will not
Not he be stray writing of his con claims that some America, UNITED STATES of agreement which trans firms an ancient oral Plaintiff-Appellee, By else. copyright ferred the someone token, parties protect third will be the same
ed. Craig GEORGE, Bradley aka: Steve Only in as unusual as this can a case one Eugene Johnson, Defendant- protection is less for the seem that there Appellant. here, Konigsberg all author. And even No. 93-50707. owner, is that record provide rule would Columbia, not so the owner. That is is still Appeals, United Court of States absolute If does have terrible. Ninth Circuit. Columbia, he exercise that control over can Argued March Submitted proper contemporaneous control and obtain require corpo- Perhaps transfer. that will 11, 1996. Decided June See, e.g., or dissolution. rate revitalization 23301.5, §§ 23301, Cal.Rev.Tax Code bad;
and 23304.1. Even that would not be so seriously corporate form
it would take the the rules of California law
and would enforce corporate form
regarding corporations. The economy upon one much of our which nothing requiring I bad about
rests. see princi- corporation follow state
ples goes as he about his business. uncertainty short, difficulties that supply parties and to
causes authors third Congress’s requirement of a
the reason for
writing supply a reason for us to em finding ways to Konigsberg
brace rather than long Again, the statute.
undermine se approach presents
run alternative authors, danger subjected who can
vere be they lost claims that somehow inventive protections by oral
their some Therefore, I
agreement years made earlier.
agree Konigsberg’s with doubts about Eden Co.,
Toys, Undergarment Florelee Inc. v.