Case 2:09-cv-02075-RLH-VCF Document 158 Filed 09/08/11 Page 1 of 16
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`UNITED STATES DISTRICT COURT
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`DISTRICT OF NEVADA
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`* * *
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`Case No.: 2:09-cv-02075-RLH-LRL
`O R D E R
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`(Motion for Leave to File
`Amended Counterclaim–#128;
`Motion for Partial Summary
`Judgment–#135; Motion for Partial
`Summary Judgment–#145; Motion for
`Partial Summary Judgment–#147)
`
`SANDY HACKETT,
`
`Plaintiff,
`
`vs.
`
`RICHARD FEENEY, an individual; ARTHUR
`PETRIE, an individual; TRP
`ENTERTAINMENT, LLC, a Nevada limited
`liability company, PLAYLV GAMING
`OPERATIONS, LLC d/b/a PLAZA HOTEL
`AND CASINO, a Nevada limited liability
`corporation, BROADWAY BOOKING OFFICE
`NYC, LTD, a New York corporation,
`
`Defendants.
`_______________________________________
`
`TRP ENTERTAINMENT, LLC, a Nevada
`limited liability company,
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`Counterclaimant,
`
`vs.
`
`SANDY HACKETT, an individual,
`
`Counterdefendant.
`_______________________________________
`
`TRP ENTERTAINMENT, LLC, a Nevada
`limited liability company,
`
`Third Party Plaintiff,
`
`vs.
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`THE HACKETT MILLER COMPANY, INC., a
`Nevada Corporation,
`
`Third Party Defendant.
`_______________________________________
`
`))))))))))))))))))))))))))))))))))))))))))
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`Before the Court are Third-party Defendants/Third-party Counterclaimant The
`Hackett Miller Company’s (“Hackett/Miller”) Motion for Leave to File Amended
`Counterclaims (filed Apr. 6, 2011), Defendant/Counterclaimant/Third-party Plaintiff TRP
`Entertainment, LLC’s Motion for Partial Summary Judgment (#135, filed June 2, 2011) on its
`false advertising and unfair competition claims, all the Defendants’ Motion for Partial Summary
`Judgment (#145, filed June 2, 2011) on Plaintiff Sandy Hackett’s copyright infringement claim,
`as well as Hackett and Hackett/Miller’s Motion for Partial Summary Judgment (filed June 23,
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`2011) on the issue of puffery. The Court has also considered the relevant Oppositions and Replies
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`filed by the parties.
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`BACKGROUND
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`Because the facts of this case are complicated the Court will only summarize the
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`background necessary to generally explain this dispute, resolve these motions, and generally
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`outline the procedural posture of this case.
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`Plaintiff Sandy Hackett and Defendants Richard Feeney and Arthur Petrie formed
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`TRP Entertainment in 2002 to produce a live tribute show to the Rat Pack (as composed of Frank
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`Sinatra, Dean Martin, Sammy Davis, Jr., and Joey Bishop). TRP Entertainment began production
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`of the show (eventually titled “The Rat Pack is Back,” though they have given it various names
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`over the years), performing it here in Las Vegas and internationally. Hackett wrote the script for
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`the show and acted in it as well.
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`In 2005, Hackett filed a copyright registration with the United States Copyright
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`Office for the script he had originally created much earlier. The application matured into United
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`States Copyright Registration No. PA 1-284-402, which is the copyright originally in dispute in
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`this case. Hackett has since filed more copyright registrations for revisions to his script and filed
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`to modify his original registration to correct certain errors.
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`In 2006, Feeney and Petrie contend that they bought out Hackett’s interest in TRP
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`Entertainment for $40,000, which Hackett disputes. Regardless of any possible buyout, Hackett
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`continued his involvement in the production until 2009. At that point tension amongst Hackett,
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`Feeney, and Petrie arose and Hackett was terminated from any further involvement with the show.
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`The next day, Hackett informed Feeney, Petrie, and TRP Entertainment that he terminated “any
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`license or consent he may have granted” in his copyrighted materials. (Dkt. #1, Compl. ¶ 21.)
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`Defendants apparently did not cease production of their show and allegedly continued to use
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`Hackett’s copyrighted material in the show.
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`After being separated from TRP Entertainment in 2009, Hackett formed
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`Hackett/Miller with his wife (the “Miller” in Hackett/Miller) to produce a “new” tribute show to
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`the Rat Pack based on Hackett’s same script. (The degree to which Hackett/Miller’s show is truly
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`new is disputed in this litigation.) Hackett/Miller created a website using the TRP Entertainment’s
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`original website designer and based off the same html and graphical code base to promote their
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`show, Sandy Hackett’s Rat Pack Show. The website (and posters, billboards, etc.) included claims
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`which TRP Entertainment contends are false advertising as they were either actually given to TRP
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`Entertainment’s show or simply false entirely.
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`On October 28, 2009, Hackett filed suit alleging multiple claims, however, only the
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`copyright infringement claim is discussed in this order. TRP Entertainment then filed various
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`counterclaims against Hackett and a third-party complaint against Hackett’s new company,
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`Hackett/Miller, but only the false advertising and unfair competition claims are discussed in this
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`order. Finally, Hackett/Miller also filed counterclaims against TRP Entertainment, which it seeks
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`to amend here. For the reasons discussed below, the Court denies TRP Entertainment’s motion on
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`false advertising and unfair competition, denies Defendants motion on copyright infringement,
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`grants Hackett and Hackett/Miller’s motion on puffery, and denies Hackett/Miller’s motion for
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`leave to amend.
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`/ / /
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`Case 2:09-cv-02075-RLH-VCF Document 158 Filed 09/08/11 Page 4 of 16
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`I.
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`DISCUSSION
`Motion for Leave to Amend to Add Counterclaims
`A.
`Legal Standard
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`Under Rule 15 of the Federal Rules of Civil Procedure, a party may amend its
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`complaint only by leave of the court after 21 days have passed since responsive pleadings have
`been filed and in the absence of the adverse party’s written consent. Thornton v. McClatchy
`Newspapers, Inc., 261 F.3d 789, 799 (9th Cir. 2001). The court has discretion to grant leave and
`should freely do so “when justice so requires.” Allen v. City of Beverly Hills, 911 F.2d 367, 373
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`(9th Cir. 1990) (quoting Fed. R. Civ. P. 15(a)). Nonetheless, courts may deny leave to amend if it
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`will cause: (1) undue delay; (2) undue prejudice to the opposing party; (3) the request is made in
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`bad faith; (4) the party has repeatedly failed to cure deficiencies; or (5) the amendment would be
`futile. Leadsinger, Inc. v. BMG Music Publ’g, 512 F.3d 522, 532 (9th Cir. 2008).
`
`However, “a request for leave to amend made after the entry of a Rule 16
`Scheduling Order is governed primarily by Rule 16(b),” rather than Rule 15. C.F. v. Capistrano
`Unified School Dist., 656 F. Supp. 2d 1190, 1192 (C.D. Cal. 2009) (citing Johnson v. Mammoth
`Recreations, Inc., 975 F.2d 604, 608–09 (9th. Cir. 1992)). Rule 16(b) and Local Rule 26-4 require
`a showing of “good cause” before modifying a scheduling order. See Mammoth Recreations, 975
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`F.2d at 608–09. Only if the moving party shows good cause under Rule 16 does the Court then
`consider whether amendment is proper under Rule 15. Id. In other words, the Court first
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`determines whether amendment of the scheduling order to extend the time for amending the
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`pleadings is proper and then determines whether the actual amendment is proper under Rule 15.
`B.
`Analysis
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`Hackett/Miller seeks to amend its answer to include three additional causes of
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`action: (1) a declaratory judgment claim that “The Rat Pack” is generic in reference to live shows
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`covering the Rat Pack; (2) cancellation or modification of the “The Rat Pack Is Back” mark
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`because of genericness; and (3) cancellation of the “The Rat Pack Is Back” mark because of naked
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`Case 2:09-cv-02075-RLH-VCF Document 158 Filed 09/08/11 Page 5 of 16
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`licensing. However, Hackett/Miller has failed to show good cause for amending the scheduling
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`order to allow for amending its answer to include these additional counterclaims. As
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`Hackett/Miller has not met the Rule 16 standard, the Court does not address the more liberal Rule
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`15 standard for amending the pleadings.
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`It is too late in this litigation to add claims that are only somewhat relevant or that
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`would require the Court to reopen discovery. At the time this motion was filed, discovery was still
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`open. However, discovery closed in this case in July, it is now September and trial is scheduled
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`for October. While discovery may not be necessary for Hackett/Miller’s first two proposed
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`additional counterclaims, a substantial amount of discovery would be necessary for the naked
`licensing claim. See generally, Anne Gilson LaLonde, Gilson on Trademarks § 6.04. Further,
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`Hackett/Miller’s proposed reasons for needing to add the naked licensing claim at this time are
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`insufficient to delay trial and reopen discovery. Thus, the Court denies amendment as to the third
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`proposed additional counterclaim.
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`As to the first two proposed additional counterclaims, Hackett/Miller argues that
`these claims are necessary only because TRP Entm’t, LLC v. BC Entm’t, Inc., 2:08-cv-579-LDG-
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`RJJ, 2009 WL 5102960 (D. Nev.) was recently dismissed for failure to prosecute despite the
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`Honorable Lloyd D. George granting summary judgment in favor of BC Entertainment on these
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`same claims. However, on the same day this motion was filed, a motion to reconsider the
`dismissal was filed in BC Entm’t. Judge George has since granted that motion, vacated the
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`dismissal, and entered a partial judgment granting much of the relief Hackett/Miller wishes to seek
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`with these amended counterclaims (specifically a ruling that “The Rat Pack” is generic in reference
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`to the Rat Pack and an order that the U.S. Patent and Trademark Office add a disclaimer to TRP
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`Entertainment’s trademark for “The Rat Pack Is Back” mark), thus negating much of
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`Hackett/Miller’s argument and reasons for needing to add these counterclaims. For all of the
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`above reasons, the Court denies the motion to amend.
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`/
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`II.
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`Motions for Partial Summary Judgment
`A.
`Legal Standard
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`The purpose of summary judgment is to avoid unnecessary trials when there is no
`dispute as to the facts before the court. Nw. Motorcycle Ass'n v. U.S. Dep't of Agric., 18 F.3d
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`1468, 1471 (9th Cir.1994). Summary judgment is appropriate when the pleadings, the discovery
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`and disclosure materials on file, and any affidavits “show there is no genuine issue as to any
`material fact and that the movant is entitled to judgment as a matter of law.” Celotex Corp. v.
`Catrett, 477 U.S. 317, 330 (1986). An issue is “genuine” if there is a sufficient evidentiary basis
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`on which a reasonable fact-finder could find for the nonmoving party and a dispute is “material” if
`it could affect the outcome of the suit under the governing law. Anderson v. Liberty Lobby, Inc.,
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`477 U.S. 242, 248–49 (1986). Where reasonable minds could differ on the material facts at issue,
`however, summary judgment is not appropriate. Warren v. City of Carlsbad, 58 F.3d 439, 441
`(9th Cir. 1995), cert. denied, 516 U.S. 1171 (1996). “The amount of evidence necessary to raise a
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`genuine issue of material fact is enough ‘to require a jury or judge to resolve the parties' differing
`versions of the truth at trial.’” Aydin Corp. v. Loral Corp., 718 F.2d 897, 902 (9th Cir. 1983)
`(quoting First Nat'l Bank v. Cities Service Co., 391 U.S. 253, 288–89 (1968)). In evaluating a
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`summary judgment motion, a court views all facts and draws all inferences in the light most
`favorable to the nonmoving party. Kaiser Cement Corp. v. Fishbach & Moore, Inc., 793 F.2d
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`1100, 1103 (9th Cir. 1986).
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`The moving party bears the burden of showing that there are no genuine issues of
`material fact. Zoslaw v. MCA Distrib. Corp., 693 F.2d 870, 883 (9th Cir. 1982). “In order to carry
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`its burden of production, the moving party must either produce evidence negating an essential
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`element of the nonmoving party’s claim or defense or show that the nonmoving party does not
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`have enough evidence of an essential element to carry its ultimate burden of persuasion at trial.”
`Nissan Fire & Marine Ins. Co. v. Fritz Cos., 210 F.3d 1099, 1102 (9th Cir. 2000). Once the
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`moving party satisfies Rule 56’s requirements, the burden shifts to the party resisting the motion to
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`Case 2:09-cv-02075-RLH-VCF Document 158 Filed 09/08/11 Page 7 of 16
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`“set forth specific facts showing that there is a genuine issue for trial.” Anderson, 477 U.S. at 256.
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`The nonmoving party “may not rely on denials in the pleadings but must produce specific
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`evidence, through affidavits or admissible discovery material, to show that the dispute exists,”
`Bhan v. NME Hosps., Inc., 929 F.2d 1404, 1409 (9th Cir. 1991), and “must do more than simply
`show that there is some metaphysical doubt as to the material facts.” Bank of America v. Orr, 285
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`F.3d 764, 783 (9th Cir. 2002) (internal citations omitted). “The mere existence of a scintilla of
`evidence in support of the plaintiff's position will be insufficient.” Anderson, 477 U.S. at 252.
`B.
`Analysis
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`The Court will address the motions on false advertising and puffery together as they
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`relate to the same issues and determination of one results in partial determination of the other. The
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`Court will then address the motion on infringement separately.
`1.
`Motion on False Advertising and Unfair Competition Claims and
`Countermotion on Puffery
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`TRP Entertainment makes three allegations of false advertising against
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`Hackett/Miller under § 43(a) of the Lanham Act, codified at 15 U.S.C. § 1125(a), and unfair
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`competition under NRS 598.0915. They are: (1) that Hackett/Miller’s website claimed two awards
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`it had not won (specifically “Best Entertainment Website and Best of Show” from the “2006
`Electronic Media Awards”); (2) Hackett/Miller misattributed testimonials from What’s On
`magazine and Player Magazine to its show on its website; and (3) Hackett/Miller displayed
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`banners, posters, and billboards including the statement “Voted #1 Best Show in Vegas!”
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`surrounded by a laurel wreath (“‘Voted #1’ Statement’”). The Court will first address
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`Hackett/Miller’s puffery defense and then address the remaining claims.
`i.
`Puffery
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`The Ninth Circuit has described puffery as “exaggerated advertising, blustering and
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`boasting upon which no reasonable buyer would rely and is not actionable under [§] 43(a).”
`Southland Sod Farms v. Stover Seed Co., 108 F.3d 1134, 1145 (9th Cir.1997) (quoting 3 J.
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`Case 2:09-cv-02075-RLH-VCF Document 158 Filed 09/08/11 Page 8 of 16
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`Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 27.04[4][d] (3d
`ed.1994)); see also Cook, Perkiss and Liehe, Inc. v. Northern Cal. Collection Serv. Inc., 911 F.2d
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`242, 246 (9th Cir. 1990) (stating that “[p]uffing has been described by most courts as involving
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`outrageous generalized statements, not making specific claims, that are so exaggerated as to
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`preclude reliance by consumers”). Here, TRP Entertainment takes issue with the “Voted #1”
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`Statement. TRP Entertainment argues that there was never an official vote (Hackett/Miller
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`apparently didn’t want the Democrats or Republicans involved, didn’t hold voter registration
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`drives, and didn’t want to get involved with the intricacies of election or campaign finance law)
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`making this a literally false statement and therefore false advertising under the Lanham Act.
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`In reality adding the word “Voted” does not substantively change the context much,
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`though maybe some. It is no different than the addition of the word “Considered” or “Rated” or
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`anything similar. All of these words (voted, considered, rated, etc.) in combination with “#1 Best
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`Show in Vegas” beg the question: By whom? Without answering that critical question there is no
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`specific claim and the statement is simply exaggerated advertising which precludes reliance by
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`consumers. However, the line between this and false advertising may be a thin one. Had
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`Hackett/Miller included “By X,” it would be false advertising unless X had actually voted the
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`show “#1 Best in Vegas.” But it did not and, therefore, is mere puffery, not actionable under the
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`Lanham Act as no one can take real meaning from the phrase in the context of no actual
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`endorsement from a voting body.
`Both parties attempt to compare this case to Southland Sod for their own benefit. In
`Southland Sod, a company advertised their product as requiring 50% less mowing without directly
`comparing it to any other product. 108 F.3d at 1145. However, a critical aspect of Southland Sod
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`is that the advertisement expressly stated that the claim was based on tests conducted by the
`advertiser’s research farm that were never done. Id. This would have been similar to
`Hackett/Miller saying “by X” in reference to the vote since the defendant in Southland Farms said
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`“tests conducted by our research farm.” Id. But, again, Hackett/Miller did not include that part
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`and, therefore, merely engaged in puffery.
`ii.
`Remaining Claims
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`As the Court has concluded that the “Voted #1” statement was mere puffery, it need
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`not further consider it. However, the remaining claims of false advertising deal with statements
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`that were not puffery and they will be dealt with here.
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`For a claim of false advertising to succeed under the Lanham Act, a plaintiff (or
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`counterclaimant) must prove that: “‘(1) the defendant made a false statement either about the
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`plaintiff’s or its own product; (2) the statement was made in commercial advertisement or
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`promotion; (3) the statement actually deceived or had the tendency to deceive a substantial
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`segment of its audience; (4) the deception is material; (5) the defendant caused its false statement
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`to enter interstate commerce; and (6) the plaintiff has been or is likely to be injured as a result of
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`the false statement, either by direct diversion of sales from itself to the defendant, or by a lessening
`of goodwill associated with the plaintiff’s product.’” Newcal Indus., Inc. v. Ikon Office Solution,
`513 F.3d 1038, 1052 (9th Cir. 2008) (quoting Jarrow Formulas, Inc. v. Nutrition Now, Inc., 304
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`F.3d 829, 835 n.4 (9th Cir. 2002)). As each element is required, if a material, factual issue
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`remains as to any element, summary judgment is improper.
`a.
`“Voted #1” Statement
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`TRP Entertainment has not met its burden to show that the allegedly false
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`statements are material. TRP contends that it need not show that the statements are material but
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`that the Court should presume that any false statement that was intentionally and literally false is
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`also material. For this proposition, TRP cites numerous cases from outside the Ninth Circuit, but
`none from within. (See Dkt. #146, Reply at 11:26-28–12:1-17.) Some of the false advertising in
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`the cases TRP Entertainment cites is egregious and the courts recognize that they apply this
`presumption in light of the egregious conduct present in their cases. See, e.g., PPX Enter., Inc. v.
`Audiofidelity Enter., Inc., 818 F.2d 266 (2d Cir. 1987) (recording company claimed that albums
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`contained performances by Jimi Hendrix when they did not and comparing the conduct to selling
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`knock-off handbags marked as Louis Vuitton). Here, Hackett/Miller placed on its website a
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`reference to a website award that isn’t even about the actual show but the website design. The
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`conduct here is not nearly so obviously material as in TRP Entertainment’s examples which may
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`warrant a presumption of materiality not requiring actual proof.
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`TRP Entertainment also tries to convince the Court that its website won the
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`advertised award. And while this is true to an extent, the evidence suggests that it was the web
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`designer (who entered the contest independent of TRP Entertainment and later designed the
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`Hackett/Miller website from the same html codebase) that won the award. (Dkt. #142, Resp. and
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`Countermot. Ex. A, Quinn Decl.) A website, like a science fair project, does not win an award
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`independently. The designer/student wins the award for the particular entry. However, TRP
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`Entertainment is correct that winning an award at one point does not entitle the designer/student to
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`claim that future projects have won awards even though they would be able to claim that they (the
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`designer/student) themselves had won awards on previous projects. However, the point remains:
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`How is this material to purchasing (or advertising) tickets to a live tribute show to the Rat Pack?
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`Who determines what show they are going to go see on the Strip based on the fact that the website
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`they purchase the tickets from has won a design award? The website isn’t even the product being
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`sold. This is like choosing your hotel based on it having an award-winning booking system: Who
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`cares? The Court is not sure and will therefore leave it to a jury to determine whether website
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`award claims on the website are material.
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` Some question may still exist here. As an example, George Lucas and Lucasfilm, Ltd. have continued
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`to modify the classic Star Wars movies with pretty much every new release (dvd, blu-ray, special editions, etc.).
`The original films won multiple awards (Oscars, Golden Globes, etc.). Can the new blu-ray release claim these
`awards even though it has been modified? The casual answer would be ‘yes, it’s practically the same movie.’
`Is there a difference with this website and these facts, obviously. But where is the line drawn, what factual
`changes are necessary for an award to no longer apply to a revision of the original? If Lucasfilm transferred the
`copyright to the films and the new owner made a few modifications, could that company claim the original
`awards? The Court need not answer these questions here because of the materiality issue, but it is an interesting
`quandary.
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`b.
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`Magazine Testimonials
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`The situation is somewhat different with the magazine testimonials, however, the
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`Court still denies summary judgment. The magazine testimonials were given to TRP
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`Entertainment’s show, before the Hackett/Miller show even existed. Therefore, it appears that
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`attributing them to the Hackett/Miller show is literally false, material, and meets the other
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`requirements for false advertising under the Lanham Act. However, when these accolades were
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`given, the TRP Entertainment show was Hackett’s script, Hackett was a key actor in the show, and
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`Billy Karl was the director. Now, Hackett’s same script is the basis for the Hackett/Miller show,
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`Hackett apparently plays the same part as he did in the TRP Entertainment Show, Billy Karl
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`directs the Hackett/Miller show (Dkt. 135, Mot. Ex. D, Website Excerpts), and there are other
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`ways in which the two shows are the same (at least at the time the statements were displayed
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`online). Further, TRP Entertainment admits to having the same statements on its own website
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`(Dkt. #135 Mot. 5:11-13) despite the fact that its show was no longer the same show the
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`magazines originally commented on as TRP Entertainment claims to have modified it in
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`contesting copyright infringement (Dkt. #155, Mot. 11:1-3). The Court has not seen evidence as to
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`what differences there were between the shows, particularly between the show the magazines
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`commented on and the Hackett/Miller show at the time of the advertisements. Nonetheless, Miller
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`admits that the statements were posted in error and that Hackett/Miller eventually removed the
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`claims. This situation leaves the Court with many questions best determined at trial and, therefore,
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`unwilling to grant summary judgment. The Court concludes that the issue of the script and the
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`general sameness and interrelations of the two shows precludes summary judgment as factual
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`questions remain for a jury.
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`c.
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`Unfair Competition Claims
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`The Court denies summary judgment on the claims under NRS 598.0915 for unfair
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`competition as the questions as to falsity and materiality present in the Lanham Act claims also
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`exist in the unfair competition claims. Further, in its arguments on the unfair competition claims,
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`TRP Entertainment argues that the inclusion of the website awards implies that the Hackett/Miller
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`show was “approved and sponsored by the Electronic Media Awards” (Dkt. 135, Mot. 16:4). This
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`doesn’t even make sense as the awards were for website design and had nothing to do with either
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`show itself and none of the statements had anything to do with “sponsorship.” As fact questions
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`remain, the Court denies summary judgment on these claims as well.
`2.
`Motion on Copyright Infringement Claim
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`In this motion Defendants seek summary judgment on Hackett’s copyright claim
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`based on two arguments. First, Defendants argue that Hackett’s copyright registration is invalid,
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`and therefore cannot support a copyright infringement action, because the deposit copy is not a
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`bonafide copy of the registered work. Second, Defendants argue that Hackett granted TRP
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`Entertainment an oral, non-exclusive license of indeterminate duration that Hackett could not
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`terminate at will as he purports to have done. The Court addresses each issue below and holds that
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`there are material, factual issues regarding each issue sufficient to prevent summary judgment.
`i.
`Registration
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`Defendants argue that Hackett cannot prosecute his copyright claim because his
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`copyright registration in invalid. The Copyright Act provides that “no civil action for infringement
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`of the copyright in any United States work shall be instituted until preregistration or registration of
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`the copyright claim has been made ....” 17 U.S.C. § 411(a). The Ninth Circuit follows the
`“application approach” to the registration requirement. Cosmetics Ideas, Inc. v.
`IAC/InteractiveCorp., 606 F.3d 612, 621 (9th Cir. 2010). This means that a copyright holder
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`meets the registration requirement of § 411(a) upon submitting an application for a registration,
`i.e. the copyright holder need not wait until the registration is approved (or denied for that matter).
`Id. at 621. Thus, to bring a copyright infringement suit a copyright holder must have filed an
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`application for a copyright registration. Nonetheless, if a registration (or, by implication, an
`application) is invalid, the “infringement action is foreclosed. Kodadek v. MTV Networks, Inc.,
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`152 F.3d 1209, 1212 (9th Cir. 1998).
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`Defendants contend that Hackett’s copyright registration is invalid (and cannot
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`support a copyright claim) because the deposit copy was not the same as the work that was
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`registered. For a valid copyright registration, “an applicant must deposit as a part of his
`application a ‘copy’ or ‘copies’ of the work.” Kodadek, 152 F.3d at 1211 (quoting 17 U.S.C. §
`408(b)(1) and (2). This requirement only “permits ‘bona fide copies of the original work.’” Id.
`(quoting Seiler v. Lucasfilm, Ltd., 808 F.2d 1316, 1322 (9th Cir. 1986). A separate registration
`must be made to enforce a copyright on a derivative or revised version of a work. Murray Hill
`Publications, Inc. v. ABC Communications, Inc., 264 F.3d 622, 630 (6th Cir. 2001) (“the
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`derivative work is distinct from the preexisting work, and, therefore, the derivative work must be
`registered before an infringement suit may be brought.”) (abrogated on other grounds by Reed
`Elsevier, Inc. v. Muchnick, 130 S. Ct. 1237 (2010)). Where the deposit is not a bonafide copy of
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`the registered work but a recreation or revised version, a court may invalidate the registration and
`deny relief in an infringement suit. See Kodadek, 152 F.3d at 1210 (copyright infringement claim
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`failed where plaintiff deposited recreated drawings made in 1993 as the deposit for drawings that
`the application identified as being created in 1991); Seiler, Ltd., 808 F.2d at 1322 (9th Cir. 1986)
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`(registration deposit requirement permits bona fide copies only).
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`Here, Hackett testified that the copy he deposited with his copyright application
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`identifying the work as created in 2001 was a copy of the script as modified through 2005. (Dkt.
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`#145, Mot. Ex. A, Sandy Hackett Depo. III, 362:11-363:8.) Thus, the deposit copy is not a
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`bonafide copy of the work as it existed in 2001, but a copy of the revised 2005 version.
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`Apparently because of this error, Hackett has filed to supplement his registration to identify the
`copyrighted work as created in 2005 and correct other errors. (See Dkt. #153, Resp. Ex. D, Form
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`CA for Supplementary Registration.) Hackett has also filed new copyright registration
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`applications for various versions of the Work that Hackett produced to Defendants during
`discovery in this case. (Id. Ex. B, Copyright Registration Applications.) As this registration error
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`/
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`appears to have been corrected, the Court is unwilling to invalidate the copyright registration on
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`this basis. At the very least, there are questions as to the validity of the registration on this point.
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`Defendants further argue that Hackett’s efforts to rectify the registration are
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`immaterial as even the supplemental registration is flawed because it only notes Hackett as author
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`whereas Hackett has testified that he incorporated material from others. (Dkt. #155, Reply Ex. A,
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`Hackett Depo. II, 167-169, 228-230.) The Court is unpersuaded by this reasoning. Defendants fail
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`to cite law that any contribution’s originator must be cited as a co-author on a copyright
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`registration or application. Defendants do not even address the factors the Ninth Circuit set forth
`in Aalmuhammed v. Lee, 202 F.3d 1227, 1234 (9th Cir. 2000) to determine joint authorship of the
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`work. Thus, the Court is unprepared to state, without citation and analysis of relevant authority,
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`that every ad-libbed line by an actor that is incorporated into a production makes that actor a co-
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`author of a work or that suggestions by an author’s father, friends, or co-workers brought in piece-
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`meal make them co-authors. The Court is further unprepared to hold as a matter of law that
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`Hackett’s registration is invalid because of the possibility of co-authorship claims and would have
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`been denied by the Copyright Office on such a basis. Accordingly, Defendants have failed to meet
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`their burden of showing that no factual questions remain and that summary judgment on Hackett’s
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`copyright claim is appropriate under this reasoning. In fact, there are many fact questions as to
`whether any of these individuals would be considered co-authors under Aalmuhammed.
`ii.
`Oral License
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`Defendants fail to show that there are no material, factual questions on the issue of
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`whether Hackett granted them an oral, non-exclusive license of indeterminate duration which
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`could not be ter