Case3:10-cv-02765-SI Document23 Filed12/23/10 Page1 of 17
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF CALIFORNIA
`
`KEVIN C. McMUNIGAL,
`Plaintiff,
`
` v.
`KATE E. BLOCH,
`Defendant.
` /
`
`No. C 10-02765 SI
`ORDER GRANTING DEFENDANT’S
`MOTION TO DISMISS COMPLAINT
`AND DENYING PLAINTIFF’S MOTION
`TO CONVERT DEFENDANT’S
`DISMISSAL MOTION INTO A MOTION
`FOR SUMMARY JUDGMENT
`
`On December 20, 2010, the Court heard argument on defendant’s motion to dismiss the
`complaint as well as plaintiff’s motion to convert defendant’s dismissal motion into a motion for
`summary judgment. Having considered the arguments of counsel and the papers submitted, the Court
`hereby GRANTS defendant’s motion to dismiss and DISMISSES the complaint with prejudice, finding
`after argument that leave to amend would be futile. The Court also DENIES plaintiff’s motion to
`convert defendant’s dismissal motion into a motion for summary judgment.
`
`BACKGROUND
`Plaintiff Kevin McMUNIGAL, a professor of law at Case Western Reserve University School
`of Law, and defendant Kate Bloch, a professor of law at the Hastings College of Law, agreed to create
`a criminal law casebook together in 1999. Compl. ¶¶ 3-5. In April of 2000, the parties entered into a
`publication agreement (“Aspen Agreement”) with Aspen Publishers (“Aspen”) to publish a casebook,
`which was to be entitled Criminal Law: A Contemporary Approach (“Casebook”), as well as an
`accompanying teacher’s manual. Id. ¶ 6. The Aspen Agreement described plaintiff and defendant
`collectively as “Authors.” Id., Ex. 2. According to the Aspen Agreement, the “Authors” were required
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`For the Northern District of California
`For the Northern District of California
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`United States District Court
`United States District Court
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`Case3:10-cv-02765-SI Document23 Filed12/23/10 Page2 of 17
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`to submit a single manuscript to Aspen by August 15, 2003. Id. ¶ 1. The Agreement granted Aspen “all
`right, title, and interest” in and to the Casebook, including the copyright. Id. ¶ 2. The Agreement also
`provided that Aspen may either terminate the Agreement or change the delivery date if the “Authors”
`do not satisfy the delivery date. Id. The “Authors” were also “jointly and severally liable for the
`obligations contained in th[e] Agreement.” Id. ¶ 4. The Agreement provided that Aspen would advance
`both “Authors” sums of $4,000, to be used by both plaintiff and defendant, for certain expenses. Id.,
`Insert B. The Aspen Agreement also provided that “[a]uthorship credit shall be given to the Authors
`in alphabetical order,” rather than by each author’s independent contributions. Id. ¶ 7. With respect to
`future editions, the Agreement provided that either “Author” may prepare a revision of the Casebook.
`Id., Insert D. The Agreement stated that “if neither Author prepares or is able to prepare [a revision]
`as agreed, a new co-author shall be selected.” Id.
`
`According to the complaint, plaintiff and defendant “independently selected and edited cases,
`statutes, jury instructions, and scholarly excerpts and wrote original text, problems, and questions for
`[their] parts of the Casebook.” Id. ¶ 10-11. Plaintiff alleges that defendant failed to obtain permission
`to use the copyrighted items she selected as required by the Aspen Agreement, forcing Aspen to do so
`in December of 2004. Id. ¶¶ 19-20. Plaintiff also alleges that defendant frequently submitted her work
`to Aspen past deadline during 2004 and 2005. Id. ¶ 18. Defendant’s breaches of the Aspen Agreement
`allegedly “forced Aspen to delay publication of the Casebook until April 29, 2005, over a year after the
`originally scheduled publication date.” Id. ¶ 13. Once published, the Casebook listed the plaintiff and
`defendant as the authors in alphabetical order, and did not identify which parts of the Casebook were
`authored by whom. Decl. of Jacqueline Scott Corley, Ex. A (Casebook).
`The Aspen Agreement also required plaintiff and defendant to write a teacher’s manual for the
`Casebook by January 1, 2004, which was scheduled for publication around March 1, 2004. Compl. ¶¶
`22-23. In the spring of 2005, defendant allegedly insisted that she write a separate teacher’s manual for
`the entire casebook, rather than divide the writing of a single teacher’s manual between herself and
`plaintiff. Id. ¶ 27. During the summer and fall of 2005, defendant allegedly did not inform Aspen or
`plaintiff when she would finish her draft of the teacher’s manual. Id. ¶ 28. Plaintiff alleges that as a
`result, Aspen was forced “to delay publication of the teacher’s manuals until March of 2006, almost a
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`year after the Casebook was published and nearly two years after the originally scheduled publication
`date for the teacher’s manual.” Id. ¶ 31. Aspen published plaintiff’s and defendant’s teacher’s manuals
`for the Casebook in one volume, with “Part I” written by plaintiff and “Part II” written by defendant.
`Id. ¶ 30. Allegedly because of defendant’s breaches of the Aspen Agreement, Aspen decided to not
`publish a revised edition of the Casebook. Id. ¶ 34.
`“Plaintiff and Defendant [allegedly] exchanged contract offers, counter-offers, and acceptances
`from May through November of 2007” in order to separate as authors and divide the Casebook materials
`by authorship. Id. ¶¶ 37-38. Plaintiff alleges that on November 13, 2007, he and defendant “reached
`final agreement to separate as authors, to divide the Casebook, and to recognize that each holds sole
`copyright to their respective parts of the Casebook” (“Separation Agreement”). Id. ¶ 40.
`On November 9, 2007, Aspen offered plaintiff and defendant new contracts to write separate
`criminal law casebooks, on the condition that they finalize their agreement to separate as authors and
`divide the Casebook materials as well as each submit new casebook proposals. Id. ¶¶ 43-44. Plaintiff
`alleges that he submitted a new casebook proposal to Aspen on November 12, 2007, three days before
`his November 15, 2007 deadline. Id. ¶¶ 44-45. Defendant, however, did not submit a new casebook
`proposal. Id. ¶ 47. Plaintiff alleges that Aspen agreed to publish a new criminal law casebook by
`plaintiff, on the condition that he “execut[e] a formal memorialization of the Separation Agreement.”
`Id. ¶ 46. On November 23, 2007, defendant allegedly repudiated the Separation Agreement and refused
`to execute a formal memorialization of it. Id. ¶¶ 48-49. Plaintiff alleges that as a result, Aspen refused
`to publish the new criminal law casebook proposed by plaintiff. Id. ¶ 50. When Aspen concluded that
`it would not publish a revised edition of the Casebook, Aspen wrote to plaintiff and defendant,
`informing them that “the copyright for future editions revert[s] back to you both.” Id., Ex. 3.
`Plaintiff originally filed suit in the Northern District of Ohio. Def. RJN, Ex. A. That case was
`dismissed for lack of personal jurisdiction. Id., Ex. K.1 Plaintiff filed the present suit on June 24, 2010.
`
`1 Defendant requests the Court to take judicial notice of the court documents filed in the Ohio
`lawsuit. See Def. RJN (Docket No. 14). The Court grants the request for judicial notice, but only for
`purposes of noticing the existence of the Ohio lawsuit, the claims made in the lawsuit, and the fact that
`various documents were filed therein. See In re Bare Escentuals, Inc. Sec. Litig., 2010 WL 3893622,
`* 11 (N.D. Cal., Sept. 30, 2010) (“[T]he Court may take judicial notice of the existence of unrelated
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`Case3:10-cv-02765-SI Document23 Filed12/23/10 Page4 of 17
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`See Compl. Plaintiff seeks (1) declaratory judgment regarding ownership of the copyright to the
`Casebook materials, (2) partition of the copyright for the Casebook, (3) declaratory judgment regarding
`the validity of the Separation Agreement and ownership of the copyright to the Casebook materials
`under the Separation Agreement, (4) specific performance of the Separation Agreement, (5) promissory
`estoppel, (6) estoppel by acquiescence, (7) damages for breach of the Aspen Agreement, and (8)
`damages for breach of the Separation Agreement. Id. ¶¶ 51-125.
`Presently before the Court is (1) defendant’s motion to dismiss the complaint under Federal Rule
`of Civil Procedure 12(b)(6) and (2) plaintiff’s motion to convert defendant’s dismissal motion into a
`motion for summary judgment.
`
`LEGAL STANDARD
`Under Federal Rule of Civil Procedure 12(b)(6), a district court must dismiss a complaint if it
`fails to state a claim upon which relief can be granted. To survive a Rule 12(b)(6) motion to dismiss,
`the plaintiff must allege “enough facts to state a claim to relief that is plausible on its face.” Bell Atl.
`Corp. v. Twombly, 550 U.S. 544, 570 (2007). This “facial plausibility” standard requires the plaintiff
`to allege facts that add up to “more than a sheer possibility that a defendant has acted unlawfully.”
`Ashcroft v. Iqbal, 129 S.Ct. 1937, 1949 (2009). While courts do not require “heightened fact pleading
`of specifics,” a plaintiff must allege facts sufficient to “raise a right to relief above the speculative level.”
` Twombly, 550 U.S. at 555, 570.
`In deciding whether the plaintiff has stated a claim upon which relief can be granted, the court
`must assume that the plaintiff’s allegations are true and must draw all reasonable inferences in the
`plaintiff’s favor. See Usher v. City of Los Angeles, 828 F.2d 556, 561 (9th Cir. 1987). However, the
`court is not required to accept as true “allegations that are merely conclusory, unwarranted deductions
`of fact, or unreasonable inferences.” In re Gilead Scis. Sec. Litig., 536 F.3d 1049, 1055 (9th Cir. 2008).
`If the Court dismisses the complaint, it must then decide whether to grant leave to amend. The
`Ninth Circuit has “repeatedly held that ‘a district court should grant leave to amend even if no request
`
`court documents, although it will not take judicial notice of such documents for the truth of the matter
`asserted within.”).
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`to amend the pleading was made, unless it determines that the pleading could not possibly be cured by
`the allegation of other facts.’” Lopez v. Smith, 203 F.3d 1122, 1130 (9th Cir. 2000) (quoting Doe v.
`United States, 58 F.3d 494, 497 (9th Cir. 1995)).
`
`DISCUSSION
`
`I.
`
`Defendant’s Motion to Dismiss
`A.
`Count I: Declaratory Judgment Regarding Ownership of the Casebook Materials
`In Count I of the complaint, plaintiff “asks this Court to declare the rights and legal obligations
`of the parties with respect to copyright to the materials collected in the Casebook.” Compl. ¶ 63.
`Plaintiff seeks declaratory judgment that the Casebook is a “collective work,” and he therefore owns
`sole copyright to the parts of the Casebook he created. Id. ¶ 59, 61. Defendant argues that Count I
`should be dismissed because the Casebook is a “joint work.”
`The distinction between joint works and collective works is significant. A “joint work” is “a
`work prepared by two or more authors with the intention that their contributions be merged into
`inseparable or interdependent parts of a unitary whole.” 17 U.S.C. § 101. “The authors of a joint work
`are co-owners of copyright in the work.” Id. § 201(a). On the other hand, a “collective work” is a
`“work . . . in which a number of contributions, constituting separate and independent works in
`themselves, are assembled into a collective whole.” Id. § 101. Examples of collective works are
`periodical issues, anthologies, and encyclopedias. Id. Furthermore, “[c]opyright in each separate
`contribution to a collective work is distinct from copyright in the collective work as a whole, and vests
`initially in the author of the contribution.” Id. § 201(c).
`Courts use three criteria to determine whether a work is jointly authored. Richlin v. Metro-
`Goldwyn-Mayer Pictures, Inc., 531 F.3d 962, 968 (9th Cir. 2008). First, courts determine “whether the
`putative coauthors ma[de] objective manifestations of a shared intent to be coauthors.” Id. (internal
`quotation marks and citation omitted). “A contract evidencing intent to be or not to be coauthors is
`dispositive.” Id. Second, courts consider “whether the alleged author superintended the work by
`exercising control.” Id. This is often the most important factor. Id. Third, courts consider “whether
`the audience appeal of the work can be attributed to both authors, and whether the share of each in its
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`success cannot be appraised.” Id. (internal quotation marks and citation omitted).
`Applying these factors here, the Court finds that the Casebook is a joint work as a matter of law.
`First, there is a contract evidencing plaintiff’s and defendant’s objective manifestation of their intent to
`be co-authors. The Aspen Agreement describes plaintiff and defendant collectively as “Authors,” and
`describes their obligations as joint obligations. Compl., Ex. 2. For instance, under the Aspen
`Agreement, the “Authors” are required to submit a single manuscript to Aspen. Id. ¶ 1. Aspen may
`either terminate the Agreement or change the delivery date if the “Authors” do not satisfy the delivery
`date. Id. The “Authors” are “jointly and severally liable for the obligations contained in th[e]
`Agreement.” Id. ¶ 4. The Agreement provides that Aspen would advance both “Authors” sums of
`$4,000, to be used by both plaintiff and defendant, for certain expenses. Id., Insert B. The Aspen
`Agreement also provides that “[a]uthorship credit shall be given to the Authors in alphabetical order,”
`rather than by each author’s independent contributions. Id. ¶ 7. Furthermore, either “Author” may
`prepare a revision of the Casebook. Id., Insert D. The Agreement states that “if neither Author prepares
`or is able to prepare [a revision] as agreed, a new co-author shall be selected.” Id. (emphasis added).
`Viewed as a whole and in the absence of any language in the Agreement supporting plaintiff’s position
`that the Casebook is a collective work, the Court holds that the contract evidences the authors’ objective
`intent to be co-authors and supports a finding that the Casebook is a joint work as a matter of law. See
`Richlin, 531 F.3d at 968.
`Plaintiff argues that the Aspen Agreement does not establish that the Casebook is a joint work
`because it does not explicitly label the Casebook a joint work, nor does it directly call the parties “co-
`authors,” which would indicate joint authorship.2 Nonetheless, the wording of the Aspen Agreement,
`as well as the fact that the Casebook attributes authorship to both parties alphabetically – without any
`indication as to which party authored what parts of the Casebook – indicate that the Casebook is a joint
`work. Furthermore, as explained above, the Aspen Agreement implies that plaintiff and defendant are
`
`2 At the hearing, the only example plaintiff could point to of language in the Aspen Agreement
`that evidences the parties’ intent to create a collective work is the provision in the Aspen Agreement
`that plaintiff and defendant would be “collectively” referred to as the “Authors” in the Agreement.
`Compl., Ex. 2, at 1. This use of the word “collectively,” however, does not relate to the work’s status
`as a joint work or a collective work.
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`co-authors. Compl., Ex. 2 (Aspen Agreement), Insert D. (“[I]f neither Author prepares or is able to
`prepare [a revision] as agreed, a new co-author shall be selected.” (emphasis added)). The Aspen
`Agreement and Casebook present sufficient objective evidence demonstrating that the intent of the
`parties was the creation of a joint work, as a matter of law.
`Turning to the second Richlin factor, both plaintiff and defendant supervised the Casebook by
`exercising control. See Richlin, 531 F.3d at 968. The complaint alleges that the parties “divided
`responsibility for creating various parts of the Casebook.” Compl. ¶ 9. Plaintiff argues, however, that
`this fact – the parties’ independent creation of their respective parts of the Casebook – supports his
`argument that the Casebook falls under the Copyright Act’s definition of a “collective work.” See 17
`U.S.C. § 101 (defining “collective work” as a work “in which a number of contributions, constituting
`separate and independent works in themselves, are assembled into a collective whole”). While we
`assume the truth of plaintiff’s allegation for purposes of this motion, the fact that the parties
`“independently selected and edited cases, statutes, jury instructions, and scholarly excerpts and wrote
`original text, problems, and questions for [their] parts of the Casebook,” id. ¶ 10-11, does not mean that
`the Casebook is a “collective” work. To the contrary, two authors may create parts of a “joint work”
`independently, as long as the authors intended their independent contributions to “be merged into
`inseparable or interdependent parts of a unitary whole.” 17 U.S.C. § 101 (defining “joint work”). Here,
`it is apparent that the Casebook is a unitary whole. The Casebook attributes authorship to the plaintiff
`and defendant in alphabetical order and does not identify which parts of the Casebook were authored
`by whom. Corley Decl., Ex. A (Casebook). Furthermore, plaintiff did not explain how the parts of the
`Casebook he authored independently could stand alone, separate from defendant’s allegedly
`independently authored sections. Instead, the Casebook relies on each author’s contributions to make
`a unitary whole.3
`
`3 As the Separation Agreement shows, there was a significant amount of material in the
`Casebook that was “jointly” created. See Compl., Ex. 1, at 6-7. In addition, the Separation Agreement
`shows that plaintiff and defendant sought “sole copyright” for different parts of chapters, such as
`specific questions and problems. See id. at 7-24. Therefore, the Separation Agreement attached to the
`complaint by plaintiff supports the Court’s conclusion that each party’s “sole contributions” to the
`Casebook cannot stand on their own as separate works. Rather, they were intertwined to create a unitary
`whole.
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`Under the third Richlin factor, the Court finds that the audience appeal of the work can be
`attributed to both plaintiff and defendant, and the share of each in its success cannot be separately
`appraised. The Casebook lists the plaintiff and defendant as the authors in alphabetical order, and does
`not identify which parts of the Casebook were authored by whom. Corley Decl., Ex. A (Casebook).
`In contrast, the teacher’s manual identifies plaintiff as the author of Part I and defendant as the author
`of Part II, demonstrating that it was possible to assign independent credit if desired. The fact that the
`Casebook was attributed to both plaintiff and defendant, without distinction, makes it impossible to
`determine which one, if any, contributed more to the Casebook’s audience appeal or success.
`Having reviewed the Richlin factors, the Court finds that the Casebook is a joint work as a matter
`of law. Plaintiff argues that whether the Casebook is a joint work or a collective work is not a proper
`issue to resolve on a motion to dismiss. Plaintiff points out that the two cases defendant cites that set
`forth the criteria courts use to decide whether a work is a joint work – Aalmuhammed v. Lee, 202 F.3d
`1227 (9th Cir. 2000) and Richlin v. Metro-Goldwyn-Mayer Pictures, Inc., 531 F.3d 962 (9th Cir. 2008)
`– both reviewed the district court judge’s ruling on a motion for summary judgment, not on a motion
`to dismiss. Aalmuhammed, 202 F.3d at 1230; Richlin, 531 F.3d at 966-67. In the present case, however,
`there is enough evidence appropriately before the Court to allow this determination to be made on a
`motion to dismiss. This evidence includes the Aspen Agreement, the Casebook, the purported
`Separation Agreement and the letter from Aspen granting the copyright for future editions to “both” of
`the authors once Aspen decided not to publish a new edition. Each of these documents was either
`attached to plaintiff’s complaint or incorporated therein by specific reference.
`Finally, plaintiff argues that his certificate of the 2004 registration for the parts of the Casebook
`he created, Compl., Ex. 4 (Certificate of Registration for “McMUNIGAL Criminal Law Contribution”),
`is prima facie evidence that he holds sole copyright to the parts of the Casebook he created and that the
`Casebook is a collective work. Copyright registration, however, creates a rebuttable presumption of
`originality. Swirsky v. Carey, 376 F.3d 841, 851 (9th Cir. 2004). It does not create a presumption that
`the author holds sole copyright to the work. Moreover, as defendant points out, there is no dispute that
`Aspen owns the copyright to the original work. See Compl., Ex. 3 (providing that the copyright for
`“future editions” of the Casebook reverts back to the authors).
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`Defendant’s motion to dismiss Count I is GRANTED without leave to amend.
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`Count II: Partition of the Copyright for the Casebook
`B.
`In Count II, plaintiff requests, “[i]f the Court finds under Count I, above, that the Casebook is
`a joint work rather than a collective work, and that therefore Plaintiff and Defendant hold joint copyright
`to all of the casebook materials, Plaintiff seeks partition of that joint copyright pursuant to California
`Code of Civil Procedure § 872.210.” Compl. ¶ 65. Defendant argues that a court does not have the
`authority to partition a copyright.
`Under federal law, a transfer of copyright ownership is not valid unless the copyright owner
`executes a signed writing transferring the ownership. 17 U.S.C. § 204(a). Furthermore, copyright
`ownership may not be transferred “by any governmental body or other official.” Id. § 201(e). Cf.
`Advance Magazine Publishers, Inc., v. Leach, 466 F. Supp. 2d 628, 636 (D. Md. 2006) (“Defendant’s
`claim to have effected the transfer [of copyright] by operation of law through adverse possession
`amounts to a claim for an involuntary transfer of rights, which is barred by 17 U.S.C. § 201(e).”). There
`is no case law to support the proposition that a court has authority to partition joint copyright ownership.
`Plaintiff’s opposition discusses legal authority that tends to establish that a co-owner of property has a
`right to partition a tenancy-in-common and that co-owners of a copyright are generally treated as tenants
`in common. This does not establish, however, that a court may partition a jointly held copyright in the
`absence of a signed transfer under Section 204(a) and in contravention to Section 201(e). Even if state
`law governs remedies a co-owner may seek when another co-owner refuses to share profits from a
`jointly copyrighted work, federal law still governs ownership and transfer of the copyright itself. See
`Effects Assocs. Inc. v. Cohen, 908 F.2d 555, 556-57 (9th Cir. 1990) (applying federal law to the transfer
`of copyright ownership).
`Accordingly, defendant’s motion to dismiss Count II is GRANTED without leave to amend.
`
`C.
`
`Count III: Declaratory Judgment Regarding the Separation Agreement and Count
`IV: Specific Performance of the Separation Agreement
`In Count III, plaintiff seeks declaratory judgment regarding the validity of the Separation
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`Agreement and ownership of the copyright to the Casebook materials under the Separation Agreement.
`In Count IV, plaintiff seeks specific performance of the Separation Agreement. Defendant argues that
`these claims are premised on defendant’s transfer, or promise to transfer, her joint copyright interests
`to plaintiff. Defendant contends that she never executed a signed writing transferring, or agreeing to
`transfer, her copyright ownership to plaintiff for the purposes of Section 204(a) of the Copyright Act,
`and, therefore, this claim should be dismissed.
`As a preliminary matter, plaintiff argues that a motion to dismiss is not proper for resolving
`defendant’s Section 204(a) defense. “Ordinarily affirmative defenses may not be raised by motion to
`dismiss,” except when “the defense raises no disputed issues of fact.” Scott v. Kuhlmann, 746 F.2d
`1377, 1378 (9th Cir. 1984) (internal citation omitted). In regard to raising a defense under Section
`204(a), however, “the treatises and considerations of judicial economy dictate that plaintiffs should be
`required to plead facts suggesting why § 204(a) does not preclude their claims, in order to survive a
`motion to dismiss.” Pamfiloff v. Giant Records, Inc., No. C-91-1708, 1991 WL 334916, at *2 (N.D. Cal.
`Oct. 28, 1991). The Court will consider defendant’s defense under Section 204(a).
`Section 204(a) of the Copyright Act provides, “[a] transfer of copyright ownership, other than
`by operation of law, is not valid unless an instrument of conveyance, or a note or memorandum of the
`transfer, is in writing and signed by the owner of the rights conveyed or such owner’s duly authorized
`agent.” 17 U.S.C. § 204(a) (emphasis added). Plaintiff has not adequately alleged that defendant signed
`a writing transferring, or agreeing to transfer, her copyright ownership to plaintiff. The complaint
`alleges that “[o]n November 13, 2007, Plaintiff and Defendant reached final agreement to separate as
`authors, to divide the Casebook, and to recognize that each holds sole copyright to their respective parts
`of the casebook when Plaintiff agreed to all remaining conditions set forth in Defendant’s prior
`counteroffer and accepted that counteroffer.” Compl. ¶ 40. Defendant asserts that a November 13, 2007
`email from plaintiff to defendant is the basis of this allegation, and requests that the Court take judicial
`notice of the email. Def. Mot. to Dismiss, at 8; Def. RJN, Ex. I.
`The Court grants defendant’s request for judicial notice for the following reasons. First, the
`Court can take judicial notice of claims made and documents filed in the Ohio lawsuit. See In re Bare
`Escentuals, Inc. Sec. Litig., 2010 WL 3893622, at *11. In the complaint he filed in the Northern District
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`of Ohio, plaintiff explicitly alleged that the November 13, 2007 email constituted the Separation
`Agreement. Def. RJN, Ex. A (Complaint, McMUNIGAL v. Bloch, 09-1674-CAB, Northern District of
`Ohio), ¶ 41 (“On November 13, 2007, Plaintiff McMUNIGAL and Defendant Bloch finalized the two
`remaining issues and divided the Casebook . . . . (See exhibit 9 – McMUNIGAL’s November 13, 2007
`acceptance of Defendant Bloch’s position regarding the two remaining issues).”); Def. RJN, Ex. I
`(Exhibit 9 to Complaint, McMUNIGAL v. Bloch, 09-1674-CAB, Northern District of Ohio) (the
`November 13, 2007 email). Second, the November 13, 2007 email is incorporated by reference into the
`complaint in this case. Compl. ¶ 40. The “incorporation by reference” doctrine allows the Court “to
`take into account documents ‘whose contents are alleged in a complaint and whose authenticity no party
`questions, but which are not physically attached to the [plaintiff’s] pleading.’” Knievel v. ESPN, 393
`F.3d 1068, 1076 (9th Cir. 2005) (quoting In re Silicon Graphics Inc. Sec. Litig., 183 F.3d 970, 986 (9th
`Cir. 1999)). Finally, neither party disputes the authenticity of this email, nor does plaintiff object to the
`request for judicial notice.
`The November 13, 2007 email, however, was sent by plaintiff to defendant. As the email was
`not sent by defendant, it cannot be a writing signed by defendant under Section 204(a). Def. RJN, Ex.
`I.4 At oral argument, plaintiff was unable to point to another writing that could satisfy the Section
`204(a)’s signed writing requirement. Rather, plaintiff argued that the signed writing requirement was
`satisfied by the series of emails plaintiff and defendant exchanged as they negotiated their separation
`as authors and division of the copyright ownership.5 A series of negotiations, however, is insufficient.
`In order to satisfy Section 204(a)’s signed writing requirement, plaintiff must be able to point to a single
`writing from defendant that evidences the parties’ full and complete agreement to transfer the
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`4 Plaintiff argues that emails assenting to a contract constitute a “signature” under the E-SIGN
`Act. The Court need not reach the issue of whether the E-SIGN Act applies to transfer of copyright
`interests, however, as there is no writing from defendant alleged here.
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`5 Plaintiff’s motion to convert defendant’s dismissal motion to a motion for summary judgment
`confirms that plaintiff believed that a series of emails plaintiff and defendant exchanged could satisfy
`Section 204(a)’s writing requirement. See Pl. Mot. to Convert Def. Dismissal Mot. to Mot. for
`Summary Judgment, at 6 (describing the Separation Agreement as an “exchange of emails”); id. at 8
`(“[T]he entire bargaining exchange creat[ed] the agreement to divide the Casebook.”). As explained
`above, however, a series of writings is insufficient; plaintiff must be able to point to a single writing
`from defendant that evidences the parties’ full and complete agreement to transfer the copyright in order
`to satisfy Section 204(a).
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`copyright.6
`Accordingly, defendant’s motion to dismiss Counts III and IV is GRANTED without leave to
`amend. Plaintiff’s own admissions as well as his failure to identify a writing that could satisfy Section
`204(a) at oral argument show that he is unable to adequately amend the complaint.
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`Count V: Promissory Estoppel and Count VI: Estoppel by Acquiescence
`D.
`If the Separation Agreement is found to not be legally binding, plaintiff requests equitable
`remedies to force defendant to transfer her interests in the copyright. Specifically, in Count V, plaintiff
`“requests judgment against Defendant estopping her from failing to fulfill her promise to separate from
`Plaintiff as an author and divide the Casebook’s materials between Plaintiff and Defendant as described
`in the Separation Agreement.” Compl. ¶ 99. In Count VI, plaintiff “requests judgment against
`Defendant estopping her from changing her position and failing to separate from Plaintiff as an author
`and divide the Casebook’s materials between Plaintiff and Defendant as described in the Separation
`Agreement.” Id. ¶ 113. Defendant argues that by stating these claims, which seek enforcement of the
`Separation Agreement, plaintiff is seeking to circumvent the signed writing requirement of Section
`204(a).
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`Equitable defenses, such as promissory estoppel and estoppel by acquiescence, may not be used
`to avoid the signed writing requirement of Section 204(a). Pamfiloff v. Giant Records, Inc., 794 F.
`Supp. 933, 937 (N.D. Cal. 1992) (“Plaintiffs are