USDC C.D. California, November 20, 2008

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The district court granted in part and denied in part a motion to dismiss a copyright infringement claim asserted by plaintiff Stanley Donen, director of the motion picture Funny Face.

Plaintiff asserted copyright infringement and breach of implied contract claims against defendant Paramount Pictures for licensing a dance scene from the motion picture featuring Audrey Hepburn to defendant The Gap, which used it in television commercials. Plaintiff alleged that he was the creator and author of the most significant parts of the motion picture, including the famous dance scene with Audrey Hepburn. Plaintiff claimed that he is either the sole author and owner, or a co-owner of the copyright in the motion picture, or owner of the dance scene as a separate component. Plaintiff claimed that he “acquiesced” for 50 years in Paramount’s claiming and exercising rights as the sole registered copyright owner of the film; however he claimed that The Gap’s use infringed his copyright because he never “acquiesced” to the motion picture’s use in a third party’s commercial.

The defendants sought dismissal on the grounds that Donen’s employment agreements for his directorial services made his work on the film a work made for hire, and that Donen’s claims were barred by the statute of limitations and laches.

The court held that plaintiff had standing to assert copyright infringement, at least at the pleading stage, because his employment agreements were ambiguous as to whether plaintiff assigned any rights to work performed with permission for third parties. The court dismissed plaintiff’s claim of ownership over the dance scene as a separate, copyrightable work or component since, even assuming the dance scene is a copyrightable component of the motion picture, it was never separately copyrighted.

The court declined to dismiss plaintiff’s claim that an implied, constructive trust was created when Paramount copyrighted the motion picture. Under the 1909 Act, the copyright registrant held an ownership interest “in trust” on behalf of the non-registering additional or “true” owner and under the 1976 Act the registrant takes legal title to the renewal copyright as constructive trustee on behalf of the non-renewing co-owner. Plaintiff pled sufficient allegations of a trust to defeat defendant’s motion to dismiss.

The court also found that potential fact issues precluded determination of the statute of limitations or laches defenses on a motion to dismiss. Lastly, the court allowed plaintiff’s implied contract claim to proceed because there was no contract that expressly or plainly covered the rights and proceeds of plaintiff’s work, for the purposes of a motion to dismiss.