FOR PUBLICATION
`UNITED STATES COURT OF APPEALS
`FOR THE NINTH CIRCUIT
`
`No. 08-55075
`D.C. No.
`CV-05-06771-SJO
`
`
`
`JULES JORDAN VIDEO, INC., a
`California corporation; ASHLEY
`GASPER, an individual,
`Plaintiffs-Appellees,
`v.
`144942 CANADA INC., a Canadian
`corporation d/b/a KAYTEL VIDEO
`DISTRIBUTION; ALAIN ELMALEH, an
`individual; LEISURE TIME VIDEO
`CANADA, INC., a Canadian
`corporation,
`
`Defendants-Appellants,
`and
`JACKY’S ONE STOP DISTRIBUTION,
`INC., a Canadian corporation;
`JACKY ELKESLASSY, an individual;
`SYLHET DISTRIBUTION, INC., a
`Canadian corporation; GERALD
`OUZZAN, an individual,
`
`Defendants.
`
`11705
`
`(cid:252)
`(cid:253)
`(cid:254)
`

`
`11706
`
`JORDAN VIDEO v. 144942 CANADA
`
`
`
`JULES JORDAN VIDEO, INC., a
`California corporation; ASHLEY
`GASPER, an individual,
`Plaintiffs-Appellants,
`v.
`144942 CANADA INC., a Canadian
`corporation d/b/a KAYTEL VIDEO
`DISTRIBUTION; ALAIN ELMALEH, an
`individual; LEISURE TIME VIDEO
`CANADA, INC., a Canadian
`corporation,
`
`Defendants-Appellees,
`and
`JACKY’S ONE STOP DISTRIBUTION,
`INC., a Canadian corporation;
`JACKY ELKESLASSY, an individual;
`SYLHET DISTRIBUTION, INC., a
`Canadian corporation; GERALD
`OUZZAN, an individual,
`
`Defendants.
`
`No. 08-55126
`D.C. No.
`CV-05-06771-SJO
`OPINION
`
`Appeal from the United States District Court
`for the Central District of California
`S. James Otero, District Judge, Presiding
`
`Argued and Submitted
`March 2, 2010—Pasadena, California
`
`Filed August 16, 2010
`
`(cid:252)
`(cid:253)
`(cid:254)
`

`
`JORDAN VIDEO v. 144942 CANADA
`
`11707
`
`Before: Alex Kozinski, Chief Judge, William A. Fletcher,
`Circuit Judge, and Robert W. Gettleman,*
`Senior District Judge.
`
`Opinion by Judge Gettleman
`
`
`
`*The Honorable Robert W. Gettleman, United States District Judge for
`the Northern District of Illinois, sitting by designation.
`
`

`
`11710
`
`JORDAN VIDEO v. 144942 CANADA
`
`COUNSEL
`
`Michael M. Plotkin (argued), Law Offices of Michael M.
`Plotkin, Los Angeles, California, Charles M. Coate, Costa,
`Abrams & Coate, LLP, Santa Monica, California, for the
`appellants.
`
`Jens Koepke (argued), Greines, Martin, Stein & Richland
`LLP, Los Angeles, California, Mark J. Poster, Sheila A.
`Wirkus, Greines, Martin, Stein & Richland, LLP, Los Ange-
`les, California, for the appellees.
`
`OPINION
`
`GETTLEMAN, Senior District Judge:
`
`Ashley Gasper is an adult movie actor who performs under
`the stage name Jules Jordan, and is the president and sole
`
`

`
`JORDAN VIDEO v. 144942 CANADA
`
`11711
`
`shareholder of Jules Jordan Video (“JJV”), the creator of the
`videos in which Gasper appears. He and his company sued
`defendants 144942 Canada, Inc., d/b/a Kaytel Video Distribu-
`tion (“Kaytel”), Leisure Time Video Canada, Inc. (“Leisure
`Time”), Alain Elmaleh, the principal shareholder of each of
`the corporate defendants (collectively the “Kaytel defen-
`dants”), Jacky’s One Stop and the other defendants named in
`this consolidated appeal. Gasper alleged that the Kaytel
`defendants had copied and sold thirteen copyrighted adult
`DVDs owned by JJV or Gasper and featuring Gasper’s per-
`formances (the “JJV action”). The complaint alleged claims
`for copyright infringement, contributory copyright infringe-
`ment, violation of unfair business practice, unfair competition
`under California law, false and misleading advertising, and
`violation of Gasper’s right of publicity. The claims for unfair
`business practices and false advertising were dismissed prior
`to trial, leaving only the claims for copyright infringement
`based on the replication and distribution of the thirteen DVDs,
`and the claim for violation of Gasper’s right of publicity
`under California law.
`
`After a lengthy and contentious trial, the jury returned a
`verdict for plaintiffs on both issues.1 After the verdict the
`court granted the Kaytel defendants’ motion for judgment as
`a matter of law (“JMOL”) in part, concluding that neither
`Gasper nor JJV had standing to assert the copyright claims,
`and denied plaintiffs’ motion for JMOL. The court rejected
`the Kaytel defendants’ claim that Gasper’s right of publicity
`claim was preempted by copyright law. Both parties have
`appealed. We disagree with the district court on both issues,
`concluding that Gasper’s right of publicity claim is preempted
`by the Copyright Act, but that Gasper and JJV had standing
`to assert the copyright claims in question.
`
`1The JSI action also involved claims for trademark violations. After trial
`JSI settled with the Kaytel defendants.
`
`

`
`11712
`
`JORDAN VIDEO v. 144942 CANADA
`
`FACTS AND PROCEDURAL HISTORY
`
`Both Gasper and Stagliano are adult film performers of
`some stature. Stagliano’s company, JSI, distributed the works
`of many producers including Stagliano and Gasper, under the
`brand names Evil Angel and Evil Empire. Gasper started
`making adult films in 1994. He produces, directs and per-
`forms in his films under the stage name Jules Jordan. He also
`writes the scripts and films the scenes. JJV, which he formed
`in 2001, is basically a one-man shop with Gasper as the presi-
`dent and sole shareholder. During the period in question, he
`received from JJV a $6,000 monthly salary and year-end
`bonuses based on company income.
`
`In 2001 Gasper agreed with Stagliano that JSI would dis-
`tribute the Jules Jordan films in the United States, but Gasper
`retained ownership of the copyright. JSI prepared Gasper’s
`copyright registration paperwork. In 2006 Gasper and JJV
`ended their relationship with JSI and began to distribute their
`own movies.
`
`Elmaleh is the sole or majority shareholder in all of the
`Kaytel companies, and formed 2918919 Canada, Inc. as a
`Canadian holding company that owns both Kaytel Video Dis-
`tribution and Leisure Time, major adult entertainment distrib-
`utors in the Canadian market. Elmaleh also owned a number
`of retail adult entertainment stores in Canada. He controlled
`all of the Kaytel defendant entities, and at least some of the
`employees were shared among the companies.
`
`In spring 2005, JSI began receiving a higher than normal
`rate of return of Jules Jordan videos. Upon review of the
`returned merchandise, Gasper learned that the returns were
`“counterfeit” copies of his DVDs. The counterfeit works were
`inferior and were replicated and compressed to fit on a smal-
`ler DVD, reducing the quality of the video.
`
`Gasper and JSI discovered that Kaytel used Media Master-
`ing Services to produce unauthorized masters of a number of
`
`

`
`JORDAN VIDEO v. 144942 CANADA
`
`11713
`
`JSI titles, including the 13 JJV titles involved in the instant
`case. Using replication broker Gerald Ouzzan and his com-
`pany Sylnet, Kaytel contracted with Diadem Digital to repli-
`cate thousands of copies of the counterfeit DVDs. Elmaleh,
`individually and on behalf of Kaytel, signed documents repre-
`senting that they owned the rights to the DVDs. One of Kay-
`tel’s employees, Jacky Elkeslassy, formed a Canadian
`company called Jacky’s One Stop, that sold the copied DVDs
`to distributors, primarily Direct Distributors in New York
`(“Direct”). Although the sales were ostensibly between Direct
`and Jacky’s One Stop, Direct dealt exclusively with Elmaleh
`and sent payments to Kaytel. Direct distributed the counterfeit
`DVDs throughout the United States.
`
`Gasper and JJV sued. On the same day that Gasper filed
`suit, a companion case, John Stagliano, Inc. v. Alain Elmaleh,
`et al. (the “JSI action”), was filed, also alleging that the Kay-
`tel defendants had replicated and distributed a number of
`Stagliano’s copyrighted DVDs without license or authority.
`
`The two cases, along with a third case brought by JJV
`against Canadian Multimedia Entertainment, Inc. (the “CME
`action”), were all originally assigned to Judge Matthew
`Byrne, whose untimely death resulted in reassignment to
`Judge Dickran Tevrizian. Judge Tevrizian consolidated the
`cases for discovery but retired from the bench prior to the
`trial. The cases were then reassigned to Judge S. James Otero,
`who consolidated the three cases for all purposes including
`trial. Prior to the trial, the plaintiffs settled with and dismissed
`their claims against Elmaleh, Gerald Ouzzan and Sylnet Dis-
`tributors, Inc. Just before trial the CME action settled, leaving
`only the JJV and JSI actions against the Kaytel defendants to
`be tried. The plaintiffs in both cases settled with Media Mas-
`tering Services, Diaden, Sylnet, Elkeslassy and Jacky and
`Direct in exchange for monthly payments and promises to
`provide documentation and testimony. JSI settled with Kaytel
`after trial.
`
`

`
`11714
`
`JORDAN VIDEO v. 144942 CANADA
`
`The JJV action went to trial on the two remaining issues,
`copyright infringement and violation of Gasper’s right of pub-
`licity under California law. The jury found that all three
`defendants infringed Gasper’s/JJV’s copyrights, awarding
`$30,000 in statutory damages for each of the thirteen DVDs
`against Kaytel, $30,000 for each DVD against Leisure Time
`and $140,000 for each DVD against Elmaleh. The jury also
`found that defendants violated Gasper’s right of publicity and
`awarded Gasper varying amounts in damages, lost profits and
`punitive damages against each defendant totaling just under
`$2.85 million, including $2.5 million in punitive damages.
`
`Prior to trial, the Kaytel defendants had moved in limine to
`exclude evidence in support of Gasper and JJV’s copyright
`claims, arguing that both Gasper and JJV lacked standing to
`assert any copyright infringement claim because the com-
`plaint alleged that Stagliano’s company, EA Productions, had
`the “exclusive rights to manufacture and distribute Plaintiffs’
`copyrighted products . . . .” The district court denied the
`motion because the evidence could have been admissible if
`relevant to claims brought by other plaintiffs, but dismissed
`sua sponte JJV and Gasper’s copyright infringement claims.
`
`During a recess on the first day of trial the court granted
`plaintiffs’ motion to reconsider and reinstated the copyright
`claims, concluding that JJV and Gasper could be “beneficial
`owners under their license agreement with JSI,” and if so,
`would have standing under 17 U.S.C. § 501(b). The court’s
`order specifically noted that defendants “may revisit the issue
`should Plaintiffs fail to perfect standing prior the close of
`Plaintiffs’ cases in chief.” Defendants attempted to raise the
`issue at the close of plaintiffs’ case, but the court did not want
`to delay the trial and instructed defendants to file written
`motions that would be entertained at the appropriate time.
`
`When the case was first reassigned to Judge Otero, he
`informed the parties both orally and in written orders that no
`dispositive motions were to be filed. Prior to trial defendants
`
`

`
`JORDAN VIDEO v. 144942 CANADA
`
`11715
`
`moved in limine to preclude plaintiffs from introducing evi-
`dence in support of their common law claims and sought dis-
`missal of those claims as preempted by the Copyright Act, 17
`U.S.C. § 301. The court refused to exclude the evidence
`because “that evidence may be relevant to the federal law
`claims which supposedly pre-empt the common law claims.”
`The court refused to consider the request to dismiss the com-
`mon law claims because it had “already told the parties that
`it will not consider any further dispositive motions.”
`
`At the close of trial both parties moved for judgment as a
`matter of law pursuant to Fed. R. Civ. P. 50. Plaintiffs sought
`JMOL on the state law claims and the copyright infringement
`claims. Defendants’ motion, on the other hand, sought JMOL
`on the copyright claim only, arguing that plaintiffs lacked
`standing. The court granted defendants’ motion, concluding
`that because Gasper was employed by JJV the motion picture
`were works for hire under 17 U.S.C. § 101 and that JJV was
`the author, leaving Gasper without standing. The court also
`concluded that because the copyright registration in Gasper’s
`name was invalid, JJV had no standing.
`
`The court denied as moot plaintiffs’ motion for JMOL in
`light of the subsequent jury verdict in favor of plaintiffs and
`the decision on defendants’ motions. The court noted, how-
`ever, that in response to plaintiffs’ motion, defendants had
`argued that plaintiffs’ California state law right of publicity
`claim was preempted by the Federal copyright claim. After
`indicating that defendants should have raised this issue in
`their own motion, the court analyzed the issue for the “sake
`of procedural clarity,” concluding that the claim was not pre-
`empted and indicating that “[i]f Defendants moved to make
`this argument, such a Motion would be DENIED.”
`
`After entry of judgment, defendants moved pursuant to
`Fed. R. Civ. P. 59 for a new trial, arguing again that Gasper’s
`state law claim was preempted by the Federal Copyright Act.
`The court denied that motion based on its earlier ruling.
`
`

`
`11716
`
`JORDAN VIDEO v. 144942 CANADA
`
`ANALYSIS
`
`I.
`
`Defendants appeal from the district court’s decision that
`Gasper’s right of publicity claim under California Civil Code
`§ 3344 was not preempted by the Copyright Act. We review
`de novo whether a federal law preempts a state law, as well
`as the district court’s interpretation of state law. Laws v. Sony
`Music Entm’t, Inc., 448 F.3d 1134, 1137 (9th Cir. 2006).
`
`[1] Congress enacted the Copyright Act, 17 U.S.C. § 101
`et seq., to define and protect the rights of copyright holders.
`The Act provides that “the owner of copyright . . . has the
`exclusive rights to do and to authorize” others to display, per-
`form, reproduce or distribute copies of the work and to pre-
`pare derivative works. 17 U.S.C. § 106. A copyright gives the
`owner the right to control the work.
`
`[2] Section 301 of the Act provides for exclusive jurisdic-
`tion over rights that are equivalent to any of the exclusive
`rights within the general scope of copyright as specified in the
`Act. “The intention of Section 301 is to preempt and abolish
`any rights under the common law or statutes of a State that are
`equivalent to copyright and that extend to works within the
`scope of Federal copyright law.” H.R. Rep. No. 94-1476 at
`130. In Laws, we stated that:
`
`We have adopted a two-part test to determine
`whether a state law claim is preempted by the Act.
`We must first determine whether the ‘subject matter’
`of the state law claim falls within the subject matter
`of copyright as described in 17 U.S.C. §§ 102 and
`103. Second, assuming that it does, we must deter-
`mine whether the rights asserted under state law are
`equivalent to the rights contained in 17 U.S.C. § 106,
`which articulates the exclusive rights of copyright
`holders.
`
`

`
`JORDAN VIDEO v. 144942 CANADA
`
`11717
`
`448 F.3d at 1137-1138.
`
`[3] This court held that a claim under the California right
`of publicity statute, Cal. Civil Code § 3344, based on an alleg-
`edly unauthorized publication of a musical recording was pre-
`empted by the Copyright Act. The court noted that Section
`102 of the Act extends copyright protection to “original works
`or authorship fixed in any tangible medium of expression
`from which they can be reproduced,” and that a work is
`“fixed” in a tangible medium “when its embodiment in a copy
`or phono record, by or under the authority of the author, is
`sufficiently permanent or stable to permit it to be perceived,
`reproduced, or otherwise communicated for a period of more
`than transitory duration.” Id. at 1139 (quoting 17 U.S.C.
`§ 101).
`
`Laws was a recording artist who had entered into a record-
`ing agreement with Elektra Records to produce master record-
`ings of her vocal performances for Elektra. The agreement
`gave Elektra “sole and exclusive right to copyright such mas-
`ter recordings.” Id. at 1136. Elektra granted Sony a non-
`exclusive license to use a sample of one of Laws recordings
`in a Sony recording by Jennifer Lopez and LL Cool J. Laws
`sued Sony claiming that the use of her voice on the Sony
`recording was a misappropriation of her right of publicity
`under California Civil Code § 3344(a). We applied the two
`part test and found that Laws’ master recordings were plainly
`original works of authorship fixed in a tangible medium of
`expression capable of reproduction. Thus, the master record-
`ings were within the “subject matter” of copyright. Id. at
`1139.
`
`Despite that obvious conclusion, Laws argued that the sub-
`ject matter of a copyright claim and a right of publicity claim
`are substantively different because the copyright claim pro-
`tects ownership rights to a work of art, while a right of public-
`ity claim concerns the right to protect one’s persona and
`likeness. Thus, Laws contended (unsuccessfully) that her right
`
`

`
`11718
`
`JORDAN VIDEO v. 144942 CANADA
`
`of publicity claim was based on an “unauthorized duplication
`of her vocal performance,” not the duplication of the master
`recording itself. Id. at 1141.
`
`[4] Gasper makes the same contention in the instant case,
`arguing that the Kaytel defendants misappropriated his name
`and “persona,” in addition to his “dramatic performance.” We
`reject this argument for the same reason we rejected it in
`Laws.
`
`Although California law recognizes an ascertainable
`interest in the publicity associated with one’s voice,
`we think it is clear that federal copyright law pre-
`empts a claim alleging misappropriation of one’s
`voice when the entirety of the allegedly misappropri-
`ated vocal performance is contained within a copy-
`righted medium.
`
`Id. at 1141.
`
`Gasper’s claim that the Kaytel defendants misappropriated
`his name and persona is based entirely on the misappropria-
`tion of the DVDs and Gasper’s performance therein. Indeed,
`the complaint alleged that “Defendants have wilfully and sys-
`tematically infringed Plaintiffs’ copyrights and rights or pub-
`licity
`(directly and by assignment) by
`the
`repeated
`unauthorized reproduction, counterfeiting, and sale of such
`counterfeit copies of Plaintiffs’ copyrighted works to third
`parties.” In the amended Pre-Trial Conference Order Gasper
`again listed the evidence in support of his right of publicity
`claim as “Mr. Gasper’s name, likeness, photograph and voice
`appear in the counterfeit Gasper Films without his authoriza-
`tion.” Thus, throughout the litigation Gasper has claimed that
`the factual basis of his right of publicity claim was the unau-
`thorized reproduction of his performance on the DVDs.
`
`On appeal he now argues, apparently for the first time, that
`it is the use of his name and likeness on the covers of the
`
`

`
`JORDAN VIDEO v. 144942 CANADA
`
`11719
`
`counterfeit DVDs that violated his right of publicity. But
`Gasper’s face appears nowhere on any of the DVD covers,
`and whether his “persona” appears in the form of some other
`part of his anatomy is unknown. What is known from the
`exhibits introduced at trial is that the pictures on the covers
`of the DVDs are “still shots” of the copyrighted video perfor-
`mance. Thus, Gasper’s argument that his right of publicity
`was violated by defendants’ reproduction of the covers is mis-
`guided.2
`
`In the district court, the Kaytel defendants relied on Fleet
`v. CBS, Inc., 50 Cal. App. 4th 1911 (1996), a case we cited
`with approval in Laws. In Fleet the court rejected claims very
`similar to those Gasper asserts in the instant case:
`
`In this case we are asked to decide a very narrow
`issue: whether an actor may bring an action for mis-
`appropriation of his or her name, image, likeness or
`identity under Section 3344 of the Civil Code when
`the only alleged exploitation occurred through the
`distribution of the actor’s performance in a motion
`picture. The trial court concluded that to the extent
`California law would permit such a claim, it was pre-
`empted by federal copyright law. We agree with the
`trial court and affirm.
`
`Id. at 1913
`
`In rejecting the Kaytel defendants’ position, the district
`court relied on KNB Enters. v. Matthews, 78 Cal. App. 4th
`362 (2000), which read Fleet narrowly and held that the right
`of publicity is preempted by the Copyright Act only when the
`
`2Even if we were to accept Gasper’s argument, the covers of the DVDs
`are likely component parts of the copyrighted DVD. See 1-2 Nimmer on
`Copyright § 2.04; Triangle Publ’ns, Inc. v. Knight-Ridder Newspapers,
`Inc., 445 F. Supp. 875 (S.D. Fla. 1978) (cover considered copyrightable
`component part and copyright of underlying work extends to cover).
`
`

`
`11720
`
`JORDAN VIDEO v. 144942 CANADA
`
`distribution is made by the exclusive copyright holder. The
`KNB court stated:
`
`Accordingly, we would limit Fleet’s broad language
`regarding preemption of the actors’ Section 3344
`claims to the unique facts of that case. In our view,
`a Section 3344 claim is preempted under Fleet where
`an actor or model with no copyright interest in the
`work seeks to prevent the exclusive copyright holder
`from displaying the copyrighted work. We do not
`believe a Section 3344 claims is preempted under
`Fleet where, as here, the defendant has no legal right
`to publish the copyrighted work.
`
`Id. at 374.
`
`Because the Kaytel defendants had no legal right to distrib-
`ute the DVDs the district court concluded that “Defendants
`did not have federal rights which could preempt Plaintiffs’
`state law rights. Thus Plaintiffs’ state law claims are not pre-
`empted by federal copyright law.”
`
`[5] We do not read Fleet or the Copyright Act so narrowly.
`Whether a claim is preempted under Section 301 does not turn
`on what rights the alleged infringer possesses, but on whether
`the rights asserted by the plaintiff are equivalent to any of the
`exclusive rights within the general scope of the copyright. The
`question is whether the rights are works of authorship fixed
`in a tangible medium of expression and come within the sub-
`ject matter of the Copyright Act. If a plaintiff asserts a claim
`that is the equivalent of a claim for infringement of a copy-
`rightable work, that claim is preempted, regardless of what
`legal rights the defendant might have acquired.
`
`[6] In the instant case, we conclude that Gasper’s right of
`publicity claim falls within the subject matter of copyright,
`and that the rights he asserts are equivalent to the rights
`within the scope of § 106 of the Copyright Act. The essence
`
`

`
`JORDAN VIDEO v. 144942 CANADA
`
`11721
`
`of Gasper’s claim is that the Kaytel defendants reproduced
`and distributed the DVDs without authorization. His claim is
`under the Copyright Act. Accordingly, we reverse the district
`court and vacate Gasper’s judgment against the Kaytel defen-
`dants for violation of his right of publicity under California law.3
`
`II.
`
`After the jury returned its verdict in favor of plaintiffs on
`their copyright infringement claim, the district court granted
`defendants’ motion JMOL. The court held that because
`Gasper was employed by JJV, the motion picture works were
`“works for hire” under the Copyright Act, 17 U.S.C. § 101.
`Therefore, JJV, not Gasper, was the author of the works and
`Gasper lacked standing. The court implicitly held that JJV
`lacked standing because the registration was invalid. Plaintiffs
`have appealed that decision, arguing that it is both legally
`erroneous, inequitable and illogical given that only Gasper or
`JJV could possibly own the copyrights and both were plain-
`tiffs in the action. We agree.
`
`[7] A district court can set aside a jury verdict and grant
`JMOL “only if, under governing law, there can be but one
`reasonable conclusion as to the verdict” and “only if ‘there is
`no legally sufficient basis for a reasonable jury to find for that
`party on that issue.” Winarto v. Toshiba Am. Elecs. Compo-
`nents, Inc., 274 F.3d 1276, 1283 (9th Cir. 2001) (citations and
`quotations omitted). We review de novo whether the films
`were works for hire. Aymes v. Bonelli, 980 F.2d 857, 861 (2d
`Cir. 1992).
`
`The Copyright Act, 17 U.S.C. § 101, defines a work made
`for hire as:
`
`3Because we vacate the damages award on the right of publicity claim,
`we need not examine appellants’ argument that there was not enough evi-
`dence to support the verdict or that the award wasn’t property apportioned.
`
`

`
`11722
`
`JORDAN VIDEO v. 144942 CANADA
`
`(1) a work prepared by an employee within the scope
`of his or her employment; or
`
`(2) a work specially ordered or commissioned for
`use as a contribution to a collective work, as part of
`a motion picture or other audio visual work, as a
`translation, as a supplementary work, as a compila-
`tion, as an instructional text, as a test, as answer
`material for a test, or as an atlas, if the parties
`expressly agree in a written instrument signed by
`them that the works shall be considered a work made
`for hire.
`
`[8] The district court correctly concluded that the films
`could not be considered works for hire under § 101(2)
`because there was no written instrument. Thus, if Gasper’s
`creative work was performed as an independent contractor, he
`would be considered the author.
`
`It was undisputed, however, that Gasper was an employee
`of JJV, at least for some purposes, leaving the question of
`whether his “creative work” was within the scope of his
`employment. The district court concluded that it was rejecting
`as “concocted at trial” Gasper’s testimony that he always
`intended that his “creative work” be kept separate from his
`work for JJV and that he would have ownership of the copy-
`rights. The court made its own factual findings that “JJV
`intended he would hold the camera, light the set, write the
`screenplay, produce and direct.”
`
`The problem with the district court’s analysis is that JJV
`was a one-man shop. Gasper was the sole officer, director,
`and shareholder of JJV, exercised complete control over it,
`and made all decisions concerning JJV and production of the
`films. It was all Gasper all the time. JJV as employer and
`Gasper as employee could certainly agree as to the scope of
`the employee’s employment, and could agree that Gasper
`should retain all copyrights. Since JJV was Gasper, JJV
`
`

`
`JORDAN VIDEO v. 144942 CANADA
`
`11723
`
`intended whatever Gasper intended, and if Gasper intended
`that his creative work be outside the scope of his employment
`with JJV, there was no one to disagree. See, e.g., M&A
`Assocs., Inc. v. VCX, Inc., 657 F. Supp. 454, 459-60 (E.D.
`Mich. 1987) (sole shareholder, director and officer of corpora-
`tion that produced film was owner of the copyright).
`
`Perhaps more importantly, even if the films were works for
`hire, the district court was correct that Gasper simply made a
`“mistake in listing himself as the author” on the copyright
`registration forms. That mistake does not constitute a basis to
`invalidate the copyright. “ ‘[I]nadvertent mistakes on registra-
`tion certificates do not invalidate a copyright and thus do not
`bar infringement actions, unless . . . the alleged infringer has
`relied to its detriment on the mistake, or the claimant intended
`to defraud the Copyright Office by making the misstate-
`ment.’ ” Lamps Plus, Inc. v. Seattle Lighting Fixture Co., 345
`F.3d 1140, 1145 (9th Cir. 2003) (quoting Urantia Found. v.
`Maaherra, 114 F.3d 955, 963 (9th Cir. 1997)).
`
`Defendants obviously did not rely on the mistake (if there
`was one) to their detriment. The evidence presented demon-
`strates that they pirated the DVDs without a care to whether
`the DVDs were copyrighted and, if so, who owned the copy-
`right. Nor did Gasper or JJV ever intend to defraud the Copy-
`right Office. The typical work for hire dispute involves a
`disagreement between the commissioning party or employer
`and the commissioned party or employee over who owns the
`copyright. See, e.g., Cmty. For Creative Non-Violence v.
`Reed, 490 U.S. 730, 733-736 (1989). In the instant case, the
`only two parties with any possible claim to ownership, JJV
`and Gasper, both believed and intended that Gasper own the
`copyright.
`
`Indeed, there was no need to defraud anyone with respect
`to ownership. If Gasper had really believed that JJV owned
`the copyright, as defendants argue on appeal, he had no need
`to lie on the registration forms. If he knew that JJV was the
`
`

`
`11724
`
`JORDAN VIDEO v. 144942 CANADA
`
`owner and wanted to own them himself, he needed only to
`transfer them to himself from JJV. Copyrights, like any other
`property right, can be transferred by any means of convey-
`ance. 17 U.S.C. § 201(d)(1). A simple written note or memo-
`randum of transfer signed by himself on behalf of JJV would
`have been sufficient, 17 U.S.C. § 204(a), and an earlier oral
`assignment can be confirmed later in a writing. Billy-Bob
`Teeth, Inc. v. Novelty, Inc., 329 F.3d 586, 591 (7th Cir. 2003).
`Corporations cannot literally discuss anything. Id. Only
`Gasper could have had discussions on behalf of JJV, and he
`consistently testified that he and JJV intended that he be the
`owner of the copyrights. If, as defendants argue, he honestly
`knew that he had not effectively achieved ownership, he could
`have at anytime simply memorialized that intent in writing.
`He had no reason to defraud the Copyright Office or concoct
`a story for purposes of this litigation.
`
`Thus, had Gasper’s testimony been sufficient to support an
`oral agreement between JJV and himself that any copyright
`technically owned by JJV was to be conveyed to him, defen-
`dants would have had no standing to complain that the agree-
`ment was never put in writing. Section 204(a) is designed to
`resolve disputes between owners and transferees and to pro-
`tect copyright holders from persons mistakenly or fraudu-
`lently claiming oral licenses or copyright ownership. Billy-
`Bob Teeth, 329 F.3d. at 592. When there is no dispute
`between the copyright owner and transferee, “ ‘it would be
`unusual and unwarranted to permit a third-party infringer to
`invoke § 204(a) to avoid suit for copyright infringement.’ ”
`Id. (quoting Imperial Residential Designs, Inc. v. Palms Dev.
`Group, Inc., 70 F.3d 96, 99 (11th Cir. 1995)).
`
`[9] Although § 101 is not a statute of frauds section as is
`§ 204, the reasoning of Imperial Residential Designs is none-
`theless applicable. As noted above, § 101 is designed to estab-
`lish ownership of a work as between a commissioning party
`or employer on the one hand and the commissioned party or
`employee on the other. It would be unusual and unwarranted
`
`

`
`JORDAN VIDEO v. 144942 CANADA
`
`11725
`
`to permit third parties such as the instant defendants to invoke
`§ 101 to avoid a suit for infringement when there is no dispute
`between the two potential owners, and both are plaintiffs to
`the lawsuit. Accordingly, we conclude that the district court
`erred in holding that the motion pictures were works for hire,
`and reverse the court’s grant of defendants’ motion JMOL
`invalidating the jury’s verdict of infringement.
`
`III.
`
`The jury awarded JJV and Gasper statutory damages for
`copyright infringement in the amounts of $390,000 against
`Kaytel Distribution, $390,000 against Leisure Time and $1.82
`million against Elmaleh. Having determined that the trial
`court erred in granting defendants’ motion JMOL, we must
`decide whether the verdict should be reinstated or whether the
`trial was so tainted by error that reinstatement would be
`unfair. On appeal, defendants challenge several rulings on
`these issues: (A) the district court’s handling of certain
`requests for admissions; and (B) the court’s submitting to the
`jury an allegedly confusing and misleading special verdict
`form.
`
`A. Defendants argue that the district court erred by permit-
`ting JSI’s counsel to read to the jury 716 requests for admis-
`sions (“RFAs”) as facts that had been admitted by Kaytel
`Distribution. Early in the discovery phase of the JSI action,
`pursuant to Fed. R. Civ. P. 36, JSI served Kaytel Distribution
`with 716 separate RFAs. The RFAs were addressed to and
`served only on Kaytel Distribution and related only to the JSI
`action. Under the Rule, Kaytel Distribution had 30 days to
`respond or the RFAs would be deemed admitted. Fed. R. Civ.
`P. 36(a)(3). On June 9, 2006, prior to the expiration of the 30
`days, JSI requested and received entry of default against Kay-
`tel Distribution for failure to answer the first amended com-
`plaint.
`
`The Kaytel defendants dismissed their counsel, and on
`August 4, 2006, their new counsel appeared in each of the
`
`

`
`11726
`
`JORDAN VIDEO v. 144942 CANADA
`
`consolidated cases and then moved to vacate the default in the
`JSI action. The court granted the motion over plaintiffs’
`objection but ordered Kaytel Distribution to pay $18,683.90
`in attorney’s fees. Within four days after the default was
`vacated, Kaytel Distribution moved for leave to respond to the
`RFAs, which had become due while it was in default. Judge
`Tevrizian denied that motion without hearing.
`
`After the case was reassigned to Judge Otero, the Kaytel
`defendants moved in limine to exclude the introduction of the
`“admissions,” arguing that because the court had entered
`default against Kaytel Distribution before any response to the
`RFAs was due, Kaytel Distribution could not respond to the
`RFAs until the default was vacated. Judge Otero denied this
`motion, stating that “defendants cite several cases which hold
`that requests for admissi