USDC N.D. California, January 28, 2009

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In a case pertaining to defendants’ use of plaintiff’s video footage and photographs taken in Central Asia immediately following the events of September 11th in a documentary entitled American Hero, the district court dismissed plaintiff’s copyright infringement claim for statutory damages and attorneys’ fees because he failed to register his copyrights before the alleged infringement. The court also dismissed plaintiff’s breach of contract claim because the parties’ “letter of intent” was not a contract and dismissed a number of causes of action that it found were either not stand-alone causes of action, but rather remedies for the copyright cause of action, or preempted by the Copyright Act.

Plaintiff and defendant Daniel Gorman signed a letter of intent in March, 2003, in which plaintiff agreed to allow defendant to use his photographs and video footage in a documentary. The letter of intent stated that the “content will be mutually agreed upon by Greg Shade and Daniel Gorman, with final approval by both parties.” The letter of intent also stated “this agreement demonstrates a good faith intent between the two parties … until a full and comprehensive contract is drafted and signed by both parties within one week of the signing of this document.”

Plaintiff alleged that he learned that defendant Gorman had used his photographs and video footage without his permission in January of 2008 and that the documentary American Hero was shown at the San Francisco Indie Film Festival on February 17, 2008. Plaintiff then registered copyrights in his works in June, 2008, and filed suit against defendants for, among other things, copyright infringement, breach of contract, and conversion.

Defendants moved to dismiss plaintiff’s claim for statutory damages and attorneys’ fees under the Copyright Act on the grounds that such relief is not available for infringement that commenced before registration. Conceding that he could not recover statutory damages or fees for any pre-registration infringement, plaintiff argued that he was entitled to statutory damages and fees for post-registration infringement. The court disagreed. The court relied on the Ninth Circuit’s recent decision Derek Andrew, Inc. v. Poof Apparel Corp., 528 F.3d 696 (9th Cir. 2008), which held “in order to recover statutory damages, the copyrighted work must have been registered prior to commencement of the infringement, unless the registration is made within three months after first publication of the work.”

The district court concluded that because the alleged infringement began on February 17, 2008, which was more than three months before plaintiff obtained copyright registration, plaintiff may not recover statutory damages or attorneys’ fees under the Copyright Act. Accordingly, the court granted defendants’ motion to dismiss the copyright infringement claim for statutory damages and attorneys’ fees. However, although plaintiff sought to recover damages that are not the type available under the Copyright Act, such as the $50,000 he spent to produce the footage and photographs, the court found the motion to dismiss plaintiff’s copyright claims for actual damages and injunctive relief premature and denied defendants’ motion as to these claims.

The court also granted defendants’ motion to dismiss the breach of contract claim because it found that the parties’ letter of intent was not a contract – instead, it merely “embodied the parties’ intent to enter into a contract.” The court dismissed plaintiff’s claim for an accounting and unjust enrichment as preempted by the Copyright Act, but denied defendants’ motion to dismiss plaintiff’s conversion claim. The court stated that a conversion claim that seeks the return of tangible property, as opposed to damages for the reproduction of intellectual property, is not preempted by the Copyright Act. Although plaintiff’s conversion claim appeared to solely seek damages, plaintiff also sought the return of tangible property, so the court granted plaintiff leave to amend the conversion claim to seek the return of plaintiff’s tangible property. While the court dismissed certain of plaintiff’s property claims that plaintiff conceded were not stand-alone causes of action, but rather remedies for his copyright cause of action, the court stated that it would allow plaintiff to seek such relief under the copyright claim.

In addition to seeking dismissal of plaintiff’s claims, defendant moved to strike plaintiff’s state law claims under California’s “Anti-SLAPP” statute. The court concluded that even assuming that defendant had made a prima facie showing that the suit arises from defendants’ constitutionally protected speech, plaintiff met his burden of showing a probability of prevailing on his one remaining state law claim for conversion, thereby defeating the motion.