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FILED
NOT FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FEB 10 2016
MOLLY C. DWYER, CLERK
U.S. COURT OF APPEALS
No. 13-56243
D.C. No. 2:04-cv-08400-ODW-RZ
Plaintiff-counter-defendant MEMORANDUM*
Appellant,
v.
WARNER BROS ENTERTAINMENT,
INC., a corporation,
Defendant - Appellee,
and
DC COMICS, a New York General
Partnership,
Defendant-counter-claimant Appellee.
No. 13-56244
D.C. No. 2:04-cv-08776-ODW-RZ
Plaintiff-counter-defendant Appellant,
*
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v.
TIME WARNER, INC., a corporation;
WARNER COMMUNICATIONS, INC., a
corporation; WARNER BROS.
ENTERTAINMENT, INC.; WARNER
BROTHERS TELEVISION
PRODUCTION, INC., a corporation,
Defendants - Appellees,
and
DC COMICS, a general partnership,
Defendant-counter-claimant Appellee.
No. 13-56257
D.C. No. 2:04-cv-08400-ODW-RZ
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Defendant-counter-claimant Appellant.
No. 13-56259
D.C. No. 2:04-cv-08776-ODW-RZ
Plaintiff-counter-defendant Appellee,
v.
TIME WARNER, INC., a corporation;
WARNER COMMUNICATIONS, INC., a
corporation; WARNER BROS.
ENTERTAINMENT, INC.; WARNER
BROTHERS TELEVISION
PRODUCTION, INC., a corporation,
Defendants - Appellants,
DC COMICS, a general partnership,
Defendant-counter-claimant Appellant.
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for this argument on 304(c)(6)(D) of the Copyright Act, which provides that [a]
further grant, or agreement to make a further grant, of any right covered by a
terminated grant is valid only if it is made after the effective date of the
termination. 17 U.S.C. 304(c)(6)(D). Larson also argues that the 2001
agreement could not bar her from recapturing the copyrights to Superboy and the
Ads through notices of termination in 2002 and 2012, respectively, because the
2001 letter is an agreement to the contrary within the meaning of 17 U.S.C.
304(c)(5). We disagree that these provisions effect the validity of the Siegels
2001 reassignment of the copyrights to Superboy and the Ads.
In Milne ex rel. Coyne v. Stephen Slesinger, Inc., 430 F.3d 1036 (9th Cir.
2005), we rejected the argument, advanced by Larson here, that Congress intended
to preclude parties from alienating their statutory termination rights by contract.
See id. at 1046 (Congress . . . anticipated that parties may contract, as an
alternative to statutory termination, to revoke a prior grant by replacing it with a
new one.). And we held that neither 304(c)(5) nor 304(c)(6)(D) invalidated an
heirs re-grant of copyrights by contract in lieu of statutory termination because the
heir had done exactly what Congress intended: he had used his increased
bargaining power conferred by the imminent threat of statutory termination to enter
into new, more advantageous grants. Id.
5
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In this case, the Siegels bargaining position was similarly fortified by their
statutory termination power. The Siegels believed that in 1999 they recaptured the
rights to the Superboy works and the Ads from DC by issuing notices in 1997
purporting to terminate pre-1978 grants for a wide range of Superman works,
including the Ads and Superboy. Although the course of litigation clarified that
the Ads and Superboy grants were not properly terminated in 1999, the Siegels,
like the heir in Milne, bargained with their statutory termination power in hand to
negotiate a highly remunerative new agreement. And, like in Milne, Larson has
failed to show that she was in any way prejudiced by this 2001 agreement, through
which the Siegels reassigned the purportedly recaptured rights to DC in exchange
for substantial compensation. Cf. Classic Media, Inc. v. Mewborn, 532 F.3d 978,
989 (9th Cir. 2008) (holding that an agreement to re-grant the rights to Lassie
works was one to the contrary under 304(c)(5) where the heir, unaware of her
future termination rights, had nothing in hand with which to bargain and
received a meager $3,000 in compensation as a result). Because the 2001
agreement replaced and superseded the earlier grants of the Superboy and Ads
copyrights, Larsons attempts to recapture these copyrights through her 2002 and
2012 notices were ineffective. See Milne, 430 F.3d at 104243.
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On remand, Larson argued for the first time that her mother, Joanne Siegel,
had rescinded the 2001 contractual settlement agreement in letters written in 2002
and that DC acquiesced in the recission. As the district court noted, permitting
Larson to raise these arguments now would substantially prejudice DC. Joanne
Siegel has since died. DC would have to change its defense strategy, conduct new
discovery, and the litigation would effectively have to begin all over. The
rescission and acquiescence affirmative defenses are therefore waived. See
Magana v. Commonwealth of Northern Mariana Islands, 107 F.3d 1436, 1446 (9th
Cir. 1997) (affirmative defenses may be raised for the first time on summary
judgment only if the delay does not prejudice the plaintiff).
Because we affirm the district courts judgment, DCs statute of limitations
claim on cross-appeal is moot and we decline to reach it.
We also reject DCs argument on cross-appeal that the district court erred in
amending its final judgment in Larsons favor on her first claim that, because the
Superman copyrights did not arise from works made for hire, she validly
terminated all prior grants of those copyrights in 1999. DC asks the court to revisit
Judge Larsons earlier rulings that the Superman works were not made for hire, but
we find no error in Judge Larsons finding that these works were not made at DCs
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instance and expense. Twentieth Cent. Fox Film Corp. v. Entmt Distrib., 429
F.3d 869, 881 (9th Cir. 2005).
AFFIRMED.
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This Court has filed and entered the attached judgment in your case.
Fed. R. App. P. 36. Please note the filed date on the attached
decision because all of the dates described below run from that date,
not from the date you receive this notice.
The mandate will issue 7 days after the expiration of the time for
filing a petition for rehearing or 7 days from the denial of a petition
for rehearing, unless the Court directs otherwise. To file a motion to
stay the mandate, file it electronically via the appellate ECF system
or, if you are a pro se litigant or an attorney with an exemption from
using appellate ECF, file one original motion on paper.
Petition for Panel Rehearing (Fed. R. App. P. 40; 9th Cir. R. 40-1)
Petition for Rehearing En Banc (Fed. R. App. P. 35; 9th Cir. R. 35-1 to -3)
(1)
A.
B.
A change in the law occurred after the case was submitted which
appears to have been overlooked by the panel; or
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(2)
See Advisory Note to 9th Cir. R. 40-1 (petitions must be received on the
due date).
(3)
Statement of Counsel
(4)
Form & Number of Copies (9th Cir. R. 40-1; Fed. R. App. P. 32(c)(2))
The petition shall not exceed 15 pages unless it complies with the
alternative length limitations of 4,200 words or 390 lines of text.
An answer, when ordered by the Court, shall comply with the same length
limitations as the petition.
If a pro se litigant elects to file a form brief pursuant to Circuit Rule 28-1, a
petition for panel rehearing or for rehearing en banc need not comply with
Fed. R. App. P. 32.
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The Bill of Costs must be filed within 14 days after entry of judgment.
Ninth Circuit Rule 39-1 describes the content and due dates for attorneys fees
applications.
All relevant forms are available on our website at www.ca9.uscourts.gov under Forms
or by telephoning (415) 355-7806.
Petition for a Writ of Certiorari
If there are any errors in a published opinion, please send a letter in writing
within 10 days to:
Thomson Reuters; 610 Opperman Drive; PO Box 64526; St. Paul, MN 551640526 (Attn: Jean Green, Senior Publications Coordinator);
and electronically file a copy of the letter via the appellate ECF system by using
File Correspondence to Court, or if you are an attorney exempted from using
the appellate ECF system, mail the Court one copy of the letter.
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Form 10. Bill of Costs ................................................................................................................................(Rev. 12-1-09)
v.
The Clerk is requested to tax the following costs against:
Cost Taxable
under FRAP 39,
28 U.S.C. 1920,
9th Cir. R. 39-1
REQUESTED
(Each Column Must Be Completed)
No. of
Docs.
Pages per
Doc.
TOTAL
COST
Cost per
Page*
ALLOWED
(To Be Completed by the Clerk)
No. of
Docs.
Cost per
Page*
Pages per
Doc.
TOTAL
COST
Excerpt of Record
Opening Brief
Answering Brief
Reply Brief
Other**
TOTAL: $
TOTAL: $
* Costs per page: May not exceed .10 or actual cost, whichever is less. 9th Circuit Rule 39-1.
** Other: Any other requests must be accompanied by a statement explaining why the item(s) should be taxed
pursuant to 9th Circuit Rule 39-1. Additional items without such supporting statements will not be
considered.
Attorneys' fees cannot be requested on this form.
Continue to next page
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Form 10. Bill of Costs - Continued
I,
, swear under penalty of perjury that the services for which costs are taxed
were actually and necessarily performed, and that the requested costs were actually expended as listed.
Signature
("s/" plus attorney's name if submitted electronically)
Date
Name of Counsel:
Attorney for:
, Deputy Clerk