Case 2:04-cv-00047-GEB-EFB Document 81 Filed 05/17/05 Page 1 of 15
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF CALIFORNIA
`
`CIV. S-04-47 GEB PAN
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`ORDER
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`KEITH STAFFORD, an individual,
`Plaintiff,
`
`v.
`UNITED TREASURES, INC., a
`Washington corporation,
`Defendant.
`
`Pending are cross motions for summary judgment or for
`summary adjudication. The motions were heard April 18, 2005. At this
`hearing, the parties agreed that no genuine issues of material fact
`exist preventing decision on the liability issues involved in the
`motions. Therefore, each party was requested to file a prevailing
`party proposed order. On May 2, 2005, proposed orders were filed, and
`responses thereto were filed on May 9, 2005.
`The pending motions involve copyright, trademark and issues
`arising out of an alleged breach of a licensing agreement. The
`following facts are undisputed.1
`
`Local Rule 56-260 obligates the parties to “cite the
`1
`particular portions of any pleading, affidavit, deposition,
`interrogatory answer, admission or other document relied upon to
`(continued...)
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`Case 2:04-cv-00047-GEB-EFB Document 81 Filed 05/17/05 Page 2 of 15
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`Keith Stafford (“Stafford”) and United
`1.
`Treasures, Inc. (“UTI”) entered a license
`agreement dated August 1, 1999.
`***
`Following the execution of the License
`15.
`Agreement, Stafford submitted two-dimensional
`artwork to UTI to use to make polyresin figurines.
`***
`Stafford in fact exercised control and
`18.
`approval over the quality of the GOODS during the
`process of developing them.
`19.
`Stafford came up with the name ANGELS OF
`INSPIRATION and instructed UTI on the proper
`trademark to use.
`20.
`UTI’s own agents and representatives have
`admitted they understood Stafford was the owner of
`the trademark ANGELS OF INSPIRATION.
`***
`On or about September 28, 2001 United
`22.
`Treasures filed an application for, and ultimately
`obtained, federal registration of the mark ANGELS
`OF INSPIRATION.
`
`***
`The name of Keith Stafford and Stafford’s
`24.
`Ethnic Collectibles was prominently and regularly
`featured in United Treasures’ advertisements for
`ANGELS OF INSPIRATION.
`25.
`The label attached that was originally
`attached by United Treasures to its angel
`figurines said “Angels of Inspiration by Keith
`Stafford” and continued to do so until 2004.
`***
`
`1(...continued)
`establish [a] fact” asserted to be undisputed or disputed. Although
`UTI asserts Stafford’s Undisputed Facts Nos. 15, 17, 18, 20, and 33
`are disputed, UTI’s evidence and argument do not constitute specific
`facts establishing a genuine issue of material dispute as to any of
`these facts.
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`Case 2:04-cv-00047-GEB-EFB Document 81 Filed 05/17/05 Page 3 of 15
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`Stafford owns the copyrights in the two-
`28.
`dimensional artwork for Kente Claus and the Angels
`of Inspiration that was submitted to UTI in 1999.
`29.
`Stafford obtained federal registration of his
`COPYRIGHTS in (a) the 2-dimensional artwork he
`submitted to United Treasures, (b) the figurines
`that UTI had made reproducing his artwork, and (c)
`the 2-dimensional artwork for the second series of
`angels in 2001.
`
`***
`From the first sale of the figurines until
`32.
`2004 the only copyright used by United Treasures
`on the figurines themselves was ©1999 Keith &
`Shereen Stafford.
`33.
`During the process of developing figurines,
`Stafford was intimately involved in review of
`sculptural changes and in providing specific
`design suggestions over the telephone with Colleen
`Melott.
`
`***
`Stafford owns the copyright in the two-
`45.
`dimensional artwork for the Angels of Inspiration
`and Kente Claus, which were submitted to UTI and
`upon which the UTI figurines were based.
`46.
`Stafford has registered his copyrights in the
`two-dimensional artwork he submitted and in the
`finished figurines for the original seven angels,
`and in just the two-dimensional artwork for the
`second series of three angels.
`(Def.’s Resp. to Pl.’s Separate Statement of Undisputed Material Facts
`in Supp. of Mot. for Summ. Adjudication.)
`BACKGROUND2
`Plaintiff Keith Stafford began making ethnic figurines and
`artwork in 1994, when he started the business Stafford’s Ethnic
`Collectibles with his wife, Shereen. Beginning in 1994 Stafford sold
`a line of African angel dolls, and his sales grew. In 1995, Stafford
`
`This background is substantially quoted from Plaintiff’s
`2
`Proposed Order on Motions for Summary Judgment filed May 2, 2005.
`Except as otherwise indicated, no genuine issue of material fact
`exists as to the facts stated in this Order.
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`Case 2:04-cv-00047-GEB-EFB Document 81 Filed 05/17/05 Page 4 of 15
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`developed the figure of Kente Claus, an African Santa Claus ornament.
`Stafford ultimately developed, and through a series of license
`relationships, marketed and sold, a series of products based upon his
`angel and Kente Claus designs.
`In early 1999 Stafford’s agent, Anmarie Linsley, owner of an
`agency firm, Public Image Consultants, met representatives of UTI at a
`trade show in Los Angeles, California. They saw samples of Stafford’s
`work and expressed interest in negotiating a license deal for his
`work. Linsley sent one of the representatives, Matt Lord, a
`confirming letter. Thereafter, the parties negotiated the terms of a
`license agreement (“Licensing Agreement”), pursuant to which UTI would
`manufacture and sell polyresin figurines based upon artwork provided
`by Stafford. At the time the Licensing Agreement was entered, the
`artwork upon which the polyresin figurines were to be based did not
`exist. In July 1999 Stafford entered a work for hire agreement with
`an illustrator named Thomas Blackshear, who was to prepare
`illustrations to submit to UTI based upon Stafford’s Kente Claus
`figure. Blackshear prepared artwork, and Stafford submitted it to
`UTI. Stafford also retained another artist named Robert Grist, who,
`under the terms of a work made for hire agreement, prepared
`illustrations for seven African angel figurines based upon Stafford’s
`recommendations. There is some dispute about exactly what artwork
`Stafford provided to UTI after executing the Licensing Agreement.
`Stafford testified that in the fall of 1999 he submitted to UTI
`two-dimensional line drawings and color artwork for seven angel
`figurines, which Stafford had individually named Joy, Unity, Peace,
`Happiness, Love, Faith, and Mercy. UTI admits Stafford submitted
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`Case 2:04-cv-00047-GEB-EFB Document 81 Filed 05/17/05 Page 5 of 15
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`two-dimensional artwork that was used to make the figurines, but its
`account is somewhat different.
`After Stafford submitted his artwork, UTI, working with
`artists located in China, manufactured eight painted polyresin
`figurines, seven of which were based upon Stafford’s Joy, Unity,
`Peace, Happiness, Love, Faith, and Mercy designs, and one of which was
`based upon his Kente Claus design. Photographs of these were e-mailed
`to UTI’s customer service representative, Colleen Melott, and to
`Stafford. Melott and Stafford then talked on the telephone to discuss
`changes to be made to the figurines. Melott was Stafford’s main
`contact for UTI for the development of the figurines. Melott sought
`Stafford’s approval on changes and design recommendations.
`Although the parties dispute some of the details and the
`legal consequences of their respective contributions to the
`development of the figurines following the submission of Stafford’s
`two-dimensional artwork, the crucial material facts concerning the
`development of the figurines are undisputed: first, Stafford
`contributed copyrightable artwork in the form of two-dimensional
`illustrations and line drawings for the express purpose of
`incorporating the artwork into three-dimensional figurines; second,
`Stafford was involved, through telephone conversations with Colleen
`Melott, in reviewing, proposing, and authorizing changes to the color
`and form of the figurines during the sculpting process; and, third,
`UTI was contractually obligated to seek Stafford’s approval, and
`throughout the development process did seek and obtain Stafford’s
`approval, for the design of the figurines.
`As was required of UTI under the terms of the Licensing
`Agreement, UTI sought and obtained Stafford’s approval for the
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`Case 2:04-cv-00047-GEB-EFB Document 81 Filed 05/17/05 Page 6 of 15
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`specific form of the copyright notice to be placed on the figurines.
`Stafford authorized the notice “© 1999 Keith & Shereen Stafford,” and
`the parties do not dispute that this was the sole copyright notice
`used on the figurines until 2004.
`During the development process Stafford also came up with
`the trademark ANGELS OF INSPIRATION, and he authorized this mark to be
`used in connection with the angels. UTI also sought and obtained, by
`letter from Lord, Stafford’s approval concerning the form of the
`trademark notice for KENTE CLAUS.
`The figurines began being sold in 2000. From the beginning
`a hang tag was placed on the figurines that said “ANGELS OF
`INSPIRATION by Keith Stafford.” Throughout 2000 and beyond UTI
`consistently advertised Stafford as the copyright owner of the
`figurines and consistently featured Stafford’s name in connection with
`the ANGELS OF INSPIRATION mark. The parties agree that this first
`commercial use of the mark ANGELS OF INSPIRATION was by UTI.
`In 2001 Stafford and UTI began working on an additional
`series of angel figurines to be sold under the ANGELS OF INSPIRATION
`mark. Their names were to be Blessed, Guidance, and Grace. Stafford
`and UTI began working on developing the figurines even before they had
`negotiated a new contract to cover them. As before, Stafford
`submitted two-dimensional artwork that had been prepared by an artist
`under a work for hire agreement. The parties negotiated the terms of
`a new contract to cover this new artwork, but ultimately the parties
`could not agree on the terms of a new contract.
`In 2001 each of the parties, without informing the other,
`registered copyrights in the figurines. Stafford registered
`copyrights in the two-dimensional artwork for the original seven
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`Case 2:04-cv-00047-GEB-EFB Document 81 Filed 05/17/05 Page 7 of 15
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`Angels of Inspiration, in the original seven figurines themselves, and
`in the artwork and drawings for the second series of three angels.
`Meanwhile, UTI registered copyrights in the original seven figurines,
`and in the three additional figurines over which the parties had
`failed to execute a new contract. No agreement had ever been signed
`by Stafford and UTI giving UTI these copyrights. Further, UTI filed
`an application for the mark ANGELS OF INSPIRATION on September 28,
`2001.
`
`In 2002 Stafford entered an agreement with a company called
`Sarah’s Attic, Inc. to make and sell figurines based upon new designs
`under the Angels of Inspiration name. The new angels – Worthy,
`Courage, Comfort, and Forgiveness – were based upon new illustrations
`provided by Stafford to Sarah’s Attic. The parties do not dispute
`that these angels are not based upon the angels made under Stafford
`and UTI’s Licensing Agreement. In addition, Stafford licensed Sarah’s
`Attic to make four-inch Christmas figurines based upon four of the
`angel designs -- Joy, Love, Peace, and Unity – that Stafford had
`submitted to UTI in 1999 under the Licensing Agreement. Stafford also
`licensed Sarah’s Attic to make three additional figures based upon the
`three angel designs -- Guidance, Blessed, and Grace – for which
`Stafford and UTI had failed to enter a new contract in 2002.
`In April 2003 Stafford entered another license agreement
`with Perkins, Inc. to permit Perkins to take photographs of the Angels
`of Inspiration figurines being sold by UTI and to use the photographs
`in calendars. In December 2003 UTI sent Sarah’s Attic and Perkins
`cease and desist letters and then sued them in federal court in the
`State of Washington.
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`Case 2:04-cv-00047-GEB-EFB Document 81 Filed 05/17/05 Page 8 of 15
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`The key issues to be resolved in the cross-motions for
`partial summary judgment are the interpretation of the Licensing
`Agreement and determination of which party owns the copyrights and
`trademark.
`
`DISCUSSION
`Each party contends that the Licensing Agreement is
`unambiguous and that it entitles each party to claim ownership of the
`polyresin figurines. Stafford asserts he licensed only a narrow right
`to UTI to reproduce his artwork in a specified medium, and that this
`did not convey a right to UTI which authorized it to own WORKS derived
`from Stafford’s artwork. UTI asserts that the Licensing Agreement
`transferred more rights to it, arguing:
`When placed in context, and taking into
`consideration the language of the contract as a
`whole, it is clear that the instant Licensing
`Agreement conferred Stafford’s right to create
`derivative works to UTI. While it is true that
`the word “reproduce” is found in the license’s
`Grant Clause, and that the Grant Clause does not
`contain the phrase “derivative works,” a plain
`reading of the contract demonstrates that the
`parties intended that UTI would use Stafford’s
`two-dimensional sketches of angels to create new
`three-dimensional, color and more complete poly
`resin figurines. Since the two-dimensional
`sketches were transformed into both a different
`form of art and a more elaborate work of art, the
`figurines are derivative works as a matter of law.
`Specifically, as set forth above, the Licensing
`Agreement confers the exclusive right to UTI
`“. . . to reproduce the WORKS on the GOODS . . . “
`According to Schedule A found at page 8 of the
`Licensing Agreement, the “WORKS” include “Six
`Angel images . . .”. According to Schedule B
`(also found at page 8 of the Agreement), the term
`“GOODS” means “Poly Resin Figurines”. Taken
`together and inserted into the Grant Clause, that
`clause reads that UTI “. . . shall have the
`exclusive right . . . to reproduce the [Six Angel
`images] on the [Poly Resin Figurines].[”]
`Accordingly, by its terms, the Licensing Agreement
`conferred to UTI the exclusive right to reproduce
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`Case 2:04-cv-00047-GEB-EFB Document 81 Filed 05/17/05 Page 9 of 15
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`the two-dimensional sketches of angels on three-
`dimensional poly resin figurines.
`Transference of the derivative work right to UTI
`comports with the use of the word “reproduce” in
`the Licensing Agreement. By definition, a
`derivative work requires that the creator of the
`derivative work “reproduce” a substantial portion
`of the original work in his or her new
`creation[.]3
`
`(Def.’s Proposed Order on Cross-Motions for Summ. J. at 10-11.)
`Stafford rejoins that “as the licensor he is entitled to
`ownership of the copyright, and UTI’s rights are only those of a
`licensee.” (Pl.’s Proposed Order on Cross-Motions for Summ. J. at
`10.) Stafford also asserts that “under the terms of the License
`Agreement (specifically; paragraphs 3, 5, and 11), [UTI’s] use [of the
`trademark Angels of Inspiration was] for the benefit of the licensor,
`or Stafford”; and therefore, he is “the proper owner of the mark.”
`(Pl.’s Resp. to UTI’s Proposed Order on Motions for Summ. J. at 7.)
`The Licensing Agreement was formed in California and
`contains a choice-of-law clause which states that California law
`governs its interpretation. UTI argues that its federal registration
`of the “Angels of Inspiration” trademark is prima facie evidence of
`its ownership of the mark, and constitutes a presumption of ownership
`that can only be overcome by a showing that meets the preponderance of
`evidence standard. Sengoku Works Ltd. v. RMC Int’l, Ltd., 96 F.3d
`1217, 1220-21 (9th Cir. 1996). Similarly, UTI argues it is the
`copyright holder in the polyresin figurines under the first sale
`doctrine.
`
`At the April 18 hearing on the motion, UTI’s counsel
`3
`indicated that UTI’s claim to derivative work was implied from
`language in the Licensing Agreement.
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`Case 2:04-cv-00047-GEB-EFB Document 81 Filed 05/17/05 Page 10 of 15
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`“[G]eneral principles of contract interpretation [are
`applied] when interpreting the terms and scope of a licensing
`agreement.” Miller v. Glen Miller Productions, 318 F. Supp. 2d 923,
`934 (C.D. Cal. 2004). “Summary judgment is appropriate when the
`contract terms are clear and unambiguous, even if the parties disagree
`as to their meaning. Interpretation of a contract is a matter of law,
`including whether the contract is ambiguous.” United States v. King
`Features Entertainment, Inc., 843 F.2d 394, 398 (9th Cir.
`1988)(citations omitted).
`The Licensing Agreement states as its purpose that the
`LICENSOR . . . grant[s] LICENSEE the right to
`reproduce LICENSOR’S designs described at Schedule
`A attached hereto and any other designs which may
`later be added to Schedule A (WORKS) according to
`Paragraph 8 on the GOODS described at Schedule B
`attached hereto or any other GOODS which may be
`later added by mutual written agreement to
`Schedule B (GOODS) . . . and to use LICENSOR’S
`trademarks and or copyrights described at
`Schedule C (TRADEMARKS/COPYRIGHTS) on the GOODS
`incorporating reproductions of the WORKS.
`Paragraph 8 states in pertinent part “Such new WORKS shall
`be subject to all the terms and conditions of this Agreement.”
`Further, in the “Acknowledgments” and “Grant” sections of the License,
`the
`
`LICENSEE acknowledges and agrees that LICENSOR is
`the sole owner of all rights, in and to the WORKS
`now described in Schedule A and any new WORKS to
`be added to Schedule A by LICENSOR. LICENSEE
`acknowledges that said WORKS and each of them are
`the unique creations of LICENSOR and that the
`WORKS carry with them unique design elements which
`constitute a protectable trade dress for
`LICENSOR’s products. Furthermore, LICENSEE
`acknowledges that the trademarks and COPYRIGHTS
`have become distinctive of LICENSOR’S GOODS
`throughout the TERRITORY and that the maintenance
`of quality of GOODS sold in connection with the
`TRADEMARKS and COPYRIGHTS is an important interest
`of LICENSOR . . . .
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`Case 2:04-cv-00047-GEB-EFB Document 81 Filed 05/17/05 Page 11 of 15
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` . . . During the [license] TERM . . ., and
`provided that LICENSEE complies with all the
`term[s] and conditions hereof, LICENSEE shall have
`the exclusive right throughout the TERRITORY to
`reproduce the WORKS on the GOODS and to use the
`TRADEMARKS and COPYRIGHTS on such GOODS
`incorporating reproductions of the WORKS. Any and
`all rights in and to the WORKS and TRADEMARKS and
`COPYRIGHTS not expressly granted to the LICENSEE
`are hereby reserved by LICENSOR.
`
`The “artwork” section of the license states in pertinent
`
`part the
`
`LICENSEE may not use this artwork for any purpose
`except to make reproductions of the WORKS on the
`GOODS for distribution in the TERRITORY during the
`TERM. Until such time as LICENSEE is obligated to
`return the artwork to LICENSOR as mentioned above,
`LICENSEE shall keep such artwork in a safe and
`secure place and ensure that the same is not made
`available to any other person for any purpose.
`LICENSEE agrees not to reproduce the artwork to
`the WORKS except during the TERM and under the
`terms and conditions specified hereunder.
`The “Quality Control” section of the license states in
`pertinent part the
`LICENSEE shall use the TRADEMARKS and or
`COPYRIGHTS on the GOODS as prescribed in writing
`by LICENSOR, including any statutory or other
`notice or symbol of trademark registration.
`LICENSEE shall use LICENSOR’S copyright notices,
`as prescribed by LICENSOR, on all reproductions of
`the WORKS as described at Schedule A shall be
`“©1999 Keith and Shereen Stafford” such dates for
`each of the WORKS being determined by first
`production run.
`
`Lastly, the Licensing Agreement contains an integration
`clause providing that:
`This Agreement represents the complete
`understanding between the parties as to its
`subject matter and supersedes all prior
`understandings, if any, as to its subject matter.
`No modification or amendment, nor any promise,
`waiver or representation (past, present or future)
`shall be valid or binding unless made in writing
`and signed by the party to be bound thereby.
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`Case 2:04-cv-00047-GEB-EFB Document 81 Filed 05/17/05 Page 12 of 15
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`The language in the Licensing Agreement is unambiguous. UTI
`acquired the right to reproduce Stafford’s artwork, but Stafford
`retained all ownership rights. In the context of the parties' entire
`agreement, it is clear that the "right of reproduction” was not
`intended to convey to UTI any ownership right in any of the works
`created under the Licensing Agreement; all ownership rights in the
`works, trademarks, and copyrights were “reserved by” Stafford. The
`literal language of the Licensing Agreement, which provides that the
`LICENSOR “reserved” “any rights in and to the WORKS and TRADEMARKS and
`COPYRIGHTS not expressly granted to the LICENSEE,” plainly encompasses
`not only copyright and trademark ownership, but also ownership of any
`“works” of the LICENSEE under the Licensing Agreement.
`Ownership rights in a trademark or service mark
`can be acquired and maintained through the use of
`the mark by a controlled licensee even when the
`first and only use of the mark was made, and is
`being made, by the licensee. This is because use
`of a designation as a mark by a qualified licensee
`inures to the benefit of the licensor, who as a
`result becomes owner of the trademark or service
`mark rights in the designation.
`McCarthy on Trademarks, § 18:46 (emphasis added).
`Section 5 of the Lanham Act definitely
`contemplates that a trade or service mark may be
`acquired through its use by controlled licensees,
`even though the registrant itself may not have
`used the mark.
`Turner v. HMH Publ’g Co., 380 F.2d 224, 229 (5th Cir. 1967). This is
`what occurred in this case. Accordingly, Stafford is the lawful owner
`of the mark ANGELS OF INSPIRATION because UTI’s usage of that mark
`inures to the benefit of Stafford under the Licensing Agreement.
`Therefore, Stafford is entitled to either have UTI’s registration of
`the mark cancelled or is entitled to an assignment of rights in the
`mark by UTI to Stafford.
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`Case 2:04-cv-00047-GEB-EFB Document 81 Filed 05/17/05 Page 13 of 15
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`UTI’s argument that the Licensing Agreement “conferred
`Stafford’s right to create derivative works to UTI” is based upon the
`contention that an implied covenant can overrule or modify the express
`terms of the Licensing Agreement. But it is pellucid that “terms that
`conflict with an express written contract cannot be implied in a
`written contract.” Kucharczyk v. Regents of Univ. of Cal., 946 F.
`Supp. 1419, 1432 (N.D. Cal. 1996) (citing Tollefson v. Roman Catholic
`Bishop, 219 Cal. App. 3d 843, 855 (1990)). Moreover, the integration
`clause in the Licensing Agreement prevents the use of parol or
`extrinsic evidence “to vary or contradict the terms of [the]
`integrated written [Licensing Agreement].” Traumann v. Southland
`Corp., 842 F. Supp. 386, 390 (N.D. Cal. 1993) (citing Masterson v.
`Sine, 68 Cal. 2d 222 (1968)). Thus, UTI’s indication that an implied
`agreement overrides the integration clause is unavailing.
`The license must be construed in accordance with
`the purposes underlying federal copyright law.
`Chief among these purposes is the protection of
`the author's rights. We rely on state law to
`provide the canons of contractual construction,
`but only to the extent such rules do not interfere
`with federal copyright law or policy. . . .
`Copyright licenses are assumed to prohibit any use
`not authorized.
`S.O.S., Inc. v. Payday, Inc., 866 F.2d 1081, 1088 (9th Cir. 1988)
`(citations omitted).4
`Construing the Licensing Agreement in accordance with the
`purposes underlying federal copyright law makes it obvious that
`
`S.O.S. also cites 17 U.S.C. § 204(a) (stating “transfer of
`4
`copyright ownership must be in writing.”). As stated in Chamberlain
`v. Cocola Ass’n., 958 F.2d 282, 285 (9th Cir. 1992), among “the
`exclusive rights” the owner of a copyright has is “to prepare
`derivative works based upon copyrighted work. . . .”
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`Case 2:04-cv-00047-GEB-EFB Document 81 Filed 05/17/05 Page 14 of 15
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`Stafford is the lawful owner of the copyrighted polyresin figurines.5
`Nothing in the Licensing Agreement authorized UTI to copyright the
`figurines. Accordingly, Stafford is granted declaratory relief that
`Stafford is the sole owner of the copyrights in the figurines, and
`UTI’s copyright registrations are invalid and unenforceable.
`Therefore, Stafford’s partial summary judgment motion for a
`declaration that the Staffords are the lawful copyright owners of the
`figurines is granted.
`Because of the above rulings, UTI’s counterclaims against
`Stafford for copyright infringement, trademark infringement, false
`
`The public policy of California as evidenced in California
`5
`Civil Code section 988 is in accordance with this holding since that
`statute indicates that, even in a situation where an ambiguity is
`present, “any ambiguity with respect to the nature or extent of the
`rights conveyed shall be resolved in favor of the reservation of
`rights by the artist or owner, unless in any given case the federal
`copyright law provides to the contrary.” “As a legislative enactment,
`[a California statute] becomes public policy.” English v. Marin Mun.
`Water Dist., 66 Cal. App. 3d 725, 730 (1977) (overruled on other
`grounds). When section 988 was construed in Chamberlain, the Ninth
`Circuit stated in part:
`[W]hen the California statute is read in
`conjunction with the federal copyright law and the
`California statute's own legislative history, the
`most reasonable interpretation of the California
`statute is that where there is an express, written
`conveyance of one or more of the limited rights
`listed in it, there can be no accompanying
`transfer of ownership unless the transfer of
`ownership is also in writing.
`***
`California's section 988 simply refines this
`requirement to direct that there be not merely an
`agreement, but a written agreement before a
`transfer of property rights may accompany a
`transfer of copyright rights.
` Chamberlain, 958 F.2d at 285.
`
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`Case 2:04-cv-00047-GEB-EFB Document 81 Filed 05/17/05 Page 15 of 15
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`designation of origin, state unfair competition, and declaratory
`relief are dismissed and UTI’s motion for partial summary judgment is
`denied. The remaining issues will be tried.
`IT IS SO ORDERED.
`Dated: May 17, 2005
`
`/s/ Garland E. Burrell, Jr.
`GARLAND E. BURRELL, JR.
`United States District Judge
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