By Marina Bogorad, Esq. Legal Perspectives April 04, 2018
A monthly column dedicated to the latest and greatest to come down from the Ninth Circuit Court of Appeals and California appellate courts
SLAPPing Ms. Melanie. If you are a fan of Gone with the Wind, you will certainly appreciate our title’s reference. Alas, Ms. Olivia de Havilland, who memorably portrayed Melanie Hamilton Wilks in that movie classic, has just got SLAPPed out of court in her feud with the creators of FX series The Feud: Bette and Joan. The 101-year-old actress contended that the series portrayed her as a vulgar hypocrite and gossip. Free speech is the answer, says Division Three of the Second Appellate District in de Havilland v. FX Networks, LLC, No. B285629 (Mar. 26, 2018). Based on this answer, the court reversed de Havilland’s win below, finding that the series’ portrayal was transformative enough to defeat the actress’ right of publicity claim. The court also concluded that there was nothing offensive in the portrayal to support her false light claim, since discussing Frank Sinatra’s well-known love for drinking or having de Havilland call her sister a bitch instead of a dragon lady, as she actually referred to her in real life, simply does not pass the required threshold of offensiveness. Finally, the fact that de Havilland is “a living legend” and “an internationally-known celebrity” does not excuse her from the required showing of malice on behalf of FX, which she could not prove.
Blurring the Copyright Lines. The Ninth Circuit largely affirms the multi-millions verdict arising from the hit song Blurred Lines in Williams v. Gaye, No. 15-56880 (9th Cir. Mar. 21, 2018). Truly, the only new winner that emerged here was T.I., since the Ninth Circuit ruled that the trial court erred when it overruled the jury’s verdict in his favor based on supposedly inconsistent verdicts. The Gaye family waived any challenge based on such an inconsistency by failing to object thereto prior to the jury’s dismissal, says the court. While T.I. can celebrate, the musical creativity gets stifled by this decision, warns the strong dissent. After all, it essentially allows one to copyright a musical style or “the groove.” The Ninth Circuit, however, can only do so much: “[O]ur decision hinges on settled procedural principles and the limited nature of our appellate review, dictated by the particular posture of this case and controlling copyright law.” In other words, the Ninth Circuit rightfully refuses to play the jury here, and—from the purely appellate standpoint, one cannot help but admire the court for its unwavering principles.
Hear No Evil, See No Evil. What you do not know, can hurt you, right? Not if you are an adult video sharing website operator, rules the Ninth Circuit in Ventura Content, Ltd. v. Motherless, Inc., 885 F.3d 597, 601 (9th Cir. Mar. 14, 2018). If you do not police the content, then you are immune from copyright infringement liability under the Digital Millennium Copyright Act. Here, Motherless qualified for the immunity because it merely stores the content at its users’ direction rather than picks and chooses the content to store. As such, when you are in the adult video sharing business, the less you know as the platform owner, the better. And, of course, once you actually know of the infringement, it is imperative that you act fast to take it down—or lose your immunity altogether. The burden of policing is thus squarely on the copyright owners, and all the website operators can breathe a little easier.
A Goodfella Just Can’t Get a Break. Frank Silvero, an actor who portrayed mob characters in such classics as Goodfellas and Godfather Part II, cannot maintain a lawsuit for “Simpsonization” of his characters, rules Division Seven of the Second Appellate District in Sivero v. Twentieth Century Fox Film Corp., No. B266469 (Feb. 13, 2018). Even though Louie on The Simpsons does resemble Silvero, the “Simpsonization” process itself is just so creative that it transformed whatever Silvero created into a new original work. “Contrary to Sivero’s argument, the fact other cartoon characters in The Simpsons share some of the same physical characteristics does not detract from the point these physical characteristics are transformative. Indeed, Sivero’s observation highlights the very point that the creative elements predominate in the work,” writes Division Seven. Fox thus walks away with the SLAPP win, and The Simpsons fans everywhere can breathe a collective sigh of relief.
Sheikhs, Drugs and SLAPPs All Around. Fox certainly got SLAPP-happy this month when its affiliate, News Corporation, walked away with a win in Bryan v. News Corp., No. B275567 (Feb. 6, 2018). Oh, what a juicy headline this was: Duchess Fergie’s former lover supplied drugs and prostitutes to a mysterious Saudi sheikh! Trouble is, this was about twenty years ago, when News of the World sent a fake sheikh with a news crew to entrap Bryan and make an illegal recording of the encounter. But wait, BBC to the rescue! In 2014, it runs an expose on the whole story, with Bryan now having a nice hook to claim republication of the whole thing. Not so fast, rules Division Seven of the Second Appellate District again, which just seems to hand out SLAPP wins to Fox this month like hot cakes. The republication was not by the original defendants, reasons the court; thus, it does not revive the claims. And while Bryan does go back to trial court with his illegal recording claim intact, his libel and invasion of privacy claims cannot survive. And no, Rupert Murdoch’s 2011 public apology for his company’s hacking practices did not save the day: just a “public relations message,” says the court.
Who Heard That Tree Falling? The Ninth Circuit cannot find an injury and thus rejects constitutional standing for plaintiffs that received a credit card receipt revealing the full expiration date for the card. In Bassett v. ABM Parking Servs., Inc., No. 16-35933 (9th Cir. Feb. 21, 2018), the court concludes that a statutory violation in itself does not confer an injury on consumers just because the receipt is issued and nobody but the consumers sees that receipt. “We need not answer whether a tree falling in the forest makes a sound when no one is there to hear it. But when this receipt fell into Bassett’s hands in a parking garage and no identity thief was there to snatch it, it did not make an injury.” As such, unless the receipt does actual harm, the Ninth Circuit turns a deaf ear to that particular tree.
Even Tinder Can’t Judge. Happy New Year, and welcome to the harsh world of dating apps. Yes, you knew Tinder discriminated based on your age, but what you did not know is that Tinder violated California law by doing so. As Division Three of the Second Appellate District determined in Candelore v. Tinder, Inc., No. B270172 (Jan. 29, 2018), Tinder’s discriminatory pricing model, which charged older customers more because Tinder viewed younger audience as more “budget conscious,” violates the Unruh Act and the Unfair Competition Law. This is because Tinder’s generalizations about its users’ incomes were “arbitrary” and “class-based.” And, of course, the best thing about this opinion is the court’s colorful holding: “Accordingly, we swipe left, and reverse.”
Name That Class Member. If you are an unnamed class member, you cannot appeal the judgment rendered in your class action, say the Supremes in Hernandez v. Restoration Hardware, Inc., No. S233983 (Jan. 29, 2018). But do not despair, unnamed class action members, you’ve got options. One is intervention. Another is filing an appealable motion to set aside the judgment below. In reaching this conclusion, the Supremes went all the way back to 1942 to affirm Eggert v. Pac. States Sav. & Loan Co., 20 Cal. 2d 199 (1942). This, of course, proves that there is nothing new under the sun—or in California jurisprudence, for that matter.
Get Your Documents Here! This is not the most exciting opinion of the year, but ‘tis the season, and we do not get much activity on appellate level this time of year. Still, it is important to know that, as the Ninth Circuit held in CVS Health Corp. v. Vividus, LLC, 878 F.3d 703 (9th Cir. Dec. 21, 2017), your arbitrators proceeding under the Federal Arbitration Act do have the power to bring out-of-state nonparties to the arbitration hearing and make them produce documents at the hearing. While this may sound a tad inconvenient, given that you would have to digest newly produced documents in a short amount of time, one can envision an arbitrator scheduling a hearing just to get the documents produced and then continuing the hearing to another date to let the parties digest the new documents. Surely, that is better than having no document production from third parties at all, as you would have it in some other circuits. Consider it a Christmas gift from the Ninth Circuit.
To Fraction or Not to Fraction. Given the holiday hiatus in California, we will check in with other circuits around the country to find relevant appellate opinions. Case in point is the Second Circuit, which upheld BMI’s power of fractional music licensing in United States v. Broadcast Music, Inc., No. 16-3830-CV, 2017 WL 6463063 (2d Cir. Dec. 19, 2017). This may complicate matters for public music broadcasters, while increasing music publishers’ market powers. Still, the Second Circuit is not bothered by the consequences, pointing out that the Copyright Act contemplates that rights may be transferred in whole or in part. New music services such as Spotify and iHeartRadio, however, may end up passing the added costs to their end users. Stay tuned.
Offend Away, Part Deux. Following on the Supremes’ opinion in Matal v. Tam that dealt with the music band called the Slants (check out our June 2017 entry entitled Offend Away below), the Federal Circuit decided that it will not be offended by the clothing brand fuct in In re Brunetti, 877 F.3d 1330 (Fed. Cir. Dec. 15, 2017). Yes, the mark is “vulgar,” writes the Federal Circuit, but the government has no “substantial interest” in policing vulgarity when it comes to trademarks. “[T]he fact that society may find speech offensive is not a sufficient reason for suppressing it,” concludes the Federal Circuit. As such, free speech is more important than offending certain impressionable consumers, and this is a great lesson to take us into the next year.
The Public Is Not Always Interested Just Because You Are Talking. Our SLAPP bonanza this month opens with a decision from Division One of the Fourth Appellate District in Bonsu v. Rady Children’s Hosp.-San Diego, No. D071076 (Nov. 21, 2017). There, defendant continued in the unfortunate stead of SLAPP-happy employers who attempt to shield themselves from bad-mouthing their employees by invoking the statute that was never meant to protect them in the first place. Even though defendant in Bonsu runs a pediatric emergency care facility, which certainly involves issues of public interest, the court rejected defendant’s SLAPP attack because its statements had nothing to do with the issue of pediatric emergency care. Rather, the statements at issue attacked the plaintiff’s employment status and his interactions with the other staff at the facility. As such, defendant’s “constitutionally protected activity is not implicated, because Plaintiff’s defamation cause of action is not ‘based on’ statements involving pediatric emergency health care…” In other words, to paraphrase Seinfeld’s infamous Soup Nazi, no SLAPP for you.
No Horsing Around Litigation Communications. Our SLAPP extravaganza continues with a decision from Division Six of the Second Appellate District in Tesfamichael v. PMB Stock Co., No. 2D CIV. B279056 (Nov. 21, 2017). (Stay safe, Division Six! It is currently closed due to the wildfires.) The plaintiff here rented a horse and allegedly misrepresented himself as a “good rider.” After sustaining injuries during his horse [mis]adventures, he sued, and defendant countersued, alleging that plaintiff’s statement that he was a good rider caused damages—after all, defendant ended up in a lawsuit because of it. The court here held that SLAPP applies via the litigation privilege. This is because plaintiff’s filing of his complaint is a protected communication under the statute, as it involves plaintiff’s constitutionally protected activity of seeking redress for his grievances. Tesfamichael thus gets to ride into the sunset after all and presumably collect his SLAPP attorney’s fees below.
The Silence Breakers Can SLAPP, Too. The third SLAPP opinion issued on the very same day as the two previous entries comes from Division Five of the Fifth Appellate District in Brenner v. Hill, No. A149758 (Nov. 21, 2017). This one should have been a no-brainer, since it involved professional models who posted an online “blacklist” of photographers who had allegedly engaged in sexually inappropriate behavior in professional settings with models. Alan Brenner, one of those on the list, sued the models for defamation and related torts. The models successfully moved to strike the complaint under the anti-SLAPP law, and the court affirmed. After all, this is the Year of the Silence Breakers, and the issues at hand exemplify matters of public interest. Notably, Brenner also failed his burden on the second prong of the SLAPP analysis because he could not master any evidence to show that the allegations were untrue. His strenuous denials of the allegations in his appellate briefs came too little, too late: it was his burden to introduce sworn evidence below. In other words, if you cannot prove your defamation claims through a simple declaration under oath, do not bother suing in the first place.
Yelpers Can SLAPP, Too. This was quite a day for SLAPP opinions, as the fourth opinion issued on November 21, 2017 comes from Division One of the Fourth Appellate District in Hays v. Gagliardi, No. D070211 (Nov. 21, 2017). The case involved a Yelp review by an unhappy customer of patio construction services. The court confirmed that “comments on a consumer-oriented web page devoted to providing consumers with information about businesses, such as Yelp …, when such comments provide information that could assist others in choosing whether or not to patronize that business, qualify as statements were ‘in connection with ... an issue of public interest….’” On the second prong, the court concluded that Yelp reviews are, for the most part, inactionable since they are opinions after all and do not involve any assertions of fact required for defamation claims to survive. The next time your write a Yelp review, make sure to make it as opinionated as possible—just to be on the safe side.
SLAPP Happy. If you thought November 21 only gave us four SLAPP opinions, you thought wrong! The fifth opinion comes from Division Three of the First Appellate District in Smith v. Cty. of Alameda, No. A149228 (Nov. 21, 2017). SLAPPing here was short and swift, as the plaintiff had already filed 17(!) lawsuits against the county focusing on the allegedly fraudulent recording of a deed of trust relating to certain real property. The latest attack aimed at a litigation document defending the recording of the deed, which the court found to be a privileged communication protected by the statute. It also did not help that plaintiff could not produce any evidence that the document was false. Along with the SLAPP order, plaintiff here was declared a vexatious litigant and precluded from filing any more lawsuits without a special dispensation from the trial court. Certainly, drawing a line at 17 lawsuits seems like a good idea.
No SLAPPing for Cosby. In this sixth and final entry on what should now be known as the SLAPP Day in California jurisprudence, Division Eight of the Second Appellate District in Dickinson v. Cosby, 225 Cal. Rptr. 3d 430 (Nov. 21, 2017), allowed Janice Dickinson’s defamation suit against Bill Cosby to proceed. After Dickinson publicly claimed that Cosby raped her, Cosby’s attorney sent her a demand letter and issued a public release, essentially accusing Dickinson of lying. The court ruled that the letter and the release were not protected by the litigation privilege because defendants never contemplated any litigation in good faith—rather, they were posturing and never actually followed up with any litigation. The court also concluded that the documents at issue were not limited to opinions but asserted contentions of provable fact because they cited certain biographical details in their attempt to demonstrate that Dickinson should not be believed. Finally, Dickerson survived the second prong of the analysis because Cosby could not defend based on substantial truth, as the letter and the release essentially claimed that Dickinson lied about the rape itself and not that she was a liar in general.
Keep Talking, Comic Con. You have an unfettered right to discuss your lawsuit in public according to the Ninth Circuit Court of Appeals. In a suit involving the battle of Comic Cons, In re Dan Farr Prods., No. 17-72682, __ F.3d __, 2017 WL 4837764 (9th Cir. Oct. 26, 2017), the organizers of Salt Lake Comic Con were precluded from speaking out about their trademark dispute with the organizers of San Diego Comic Con based on the trial court’s concern that the potential jury pool would get tainted by the various heated discussions on social media. The Ninth Circuit would have none of that: finding the speech restraint “unconstitutional,” the court concluded that the far-ranging reach of the internet does not justify the gag order. True, the parties involved have “more than 5,200 followers, the Salt Lake Comic Con Twitter feed has more than 30,000 followers, there have been more than 200,000 media articles reporting on the instant case, and in 2014 Salt Lake Comic Con had more than 120,000 attendees.” Yet one’s popularity cannot trump the Constitution, especially where, as here, the jury pool is a “list of approximately 1.75 million registered voters in San Diego and Imperial Counties.” Surely, that large of a pool is perfectly capable of yielding twelve impartial citizens to decide who gets to host your superheroes next year.
Bursting the Arbitration Bubble. Yes, it may be perfectly legal to require your employees to waive their right to a jury trial as a condition of employment. But getting too greedy with arbitration has its consequences. Case in point: Baxter v. Genworth N. Am. Corp., No. A144744 (Oct. 26, 2017), wherein Division Three of the First Appellate District found that the arbitration provisions in question were just too onerous to survive scrutiny. After all, the employer here severely limited the employees’ discovery rights and imposed egregious time limits on pursuing their grievances. Somewhere some arbitration-happy in-house lawyer is probably shaking his fists in anger. But the lesson here is that moderation is the key ingredient in everything, including arbitration clauses in employment agreements.
The Walking Dead Claims. This month, given the dearth of appellate opinions dealing with matters of entertainment law, we will entertain ourselves with zombie claims. That’s not a legal term per se; rather, this is the end result of what happened in F.E.V. v. City of Anaheim, 15 Cal. App. 5th 462 (Sept. 19, 2017). There, Division Three of the Fourth District grapples with an age-old problem of supplemental jurisdiction. Namely, what do you do when you have federal and state law claims, federal claims get dismissed and that dismissal is affirmed on appeal, then state claims are refiled in state court, dismissed because of the federal dismissal, which is then affirmed on appeal, but then the full panel of the Ninth Circuit suddenly reinstates the federal claims? If you are getting a headache just reading this, you are not alone. Fortunately, the F.E.V. court found a cure: when all of the above happens, you get a free-pass on reviving your state law claims under the “exceptional circumstances” exception to claim preclusion. So there they go, dead claims walking.
You are Not in Hollywood Anymore, Harvey. Thankfully, it is a different Harvey this time, as we will take a quick trip to New York, given that California courts seem to have taken a hiatus on relevant opinions this month. This Harvey is Harvey Keitel, and he insists that he had a deal with E*Trade to star in their commercials. Not according to New York courts, as it becomes clear from Keitel v. E*TRADE Fin. Corp., 153 A.D.3d 1181 (N.Y. App. Div. Sept. 26, 2017). The court there rejected the notion that Hollywood napkin-deal practices can substitute for the law of New York. Rather, the court held that just because Harvey’s agent requested a firm offer and the company intended to give it to him, it does not mean that the term-sheet circulated between the parties that specifically presupposed further negotiations became a binding contract. New York courts—just like all the courts around the country—prefer for the parties to actually read what the supposed contract says, which is always a good rule of thumb.
“Star Wars is still Star Wars, even without Princess Leia’s bikini scene,” writes the Ninth Circuit in Disney Enterprises, Inc. v. VidAngel, Inc., 869 F.3d 848, 861 (9th Cir. Aug. 24, 2017), and one cannot help but wonder if the end of summer is to blame for the justices having bikinis on their minds. Famous buns aside, however, the decision is noteworthy for being the first one to interpret the Family Home Movie Act as a defense to copyright infringement. Defendant in this case, VidAngel, came up with an ingenious app that stripped movies of any offensive content. However, the statute, which allows filtering of an authorized copy, did not apply to VidAngel, which sold new movies to its customers for $20 and then bought them back to filter for $19. VidAngel had no luck in the fair use department either, since making the movies non-offensive is not transformative enough for this defense to apply. For now, you will just have to avert your eyes whenever the bikini scene comes on.
Pierce Away. If reverse veil piercing sounds painful, it is actually pretty cool. In Curci Investments, LLC v. Baldwin, 14 Cal. App. 5th 214 (Aug. 10, 2017), Division Three of the First Appellate District held that a limited liability company in which the judgment debtor held interest could be added to the judgment. All one needs to do is to make a proper showing under the alter ego test to have a new and shiny judgment debtor added to one’s judgment. This sounds great in theory but the facts in Curci may make it an outlier, since the judgment debtor there held a 99 percent interest in the company, and his wife, who was also liable for his debts, held the remaining one percent interest. As such, there was “simply … no ‘innocent’ member” of the company “that could be affected by reverse piercing here,” concluded Division Three. It remains to be seen if reverse piercing takes hold on different facts in California.
Choose Your HR Managers Wisely. The Ninth Circuit holds that your company will still be responsible for federal law violations and multiple fines if you start getting letters from the United States, and your human resources director “literally stuff[s] the government’s correspondence in a drawer and never respond[s].” The company in DLS Precision Fab LLC v. U.S. Immigration & Customs Enf’t, 867 F.3d 1079 (9th Cir. Aug. 7, 2017), learned this the hard way to the tune of a $300,000+ penalty based on the court’s holding that there is no good faith defense to failing to check immigration status of its employees and then ignoring repeated warnings of the violations. Ouch.
No Monkeying Around. This case is not new and nothing will happen to it this month, other than oral arguments—but in this otherwise slow appellate month, how about a case brought by a monkey claiming copyright? Meet an Indonesian crested macaque named Naruto, who is currently proceeding as the plaintiff before the Ninth Circuit in Naruto v. Slater, Case No. 16-15469. The case arises out of a selfie taken with a camera momentarily abandoned by a wildlife photographer in an Indonesian forest, which went viral. PETA thinks Naruto owns the rights to the picture. The argument goes that just because Naruto is a monkey, it does not mean that he could not be the author. The district court below disagreed, ruling that Naruto lacks standing to sue in federal court. Undaunted, PETA still contends that Naruto is the copyright owner. How would a monkey even proceed with a lawsuit, one might wonder? There is a little known procedural device entitled the “next friend”—which, incidentally, now is creating its own side-show in the case, since Naruto’s “next friend,” a U.K.-based primatologist that claims to have known Naruto since his birth in 2008, is embroiled in a related legal dispute with PETA. All monkeying aside, however, PETA claims that the case may have long-standing implications for future cases involving works created by artificial intelligence. For now, however, Naruto does not expect to be paid in bananas, as any damages Naruto recovers would be used to protect his species—which is endangered and at risk of extinction. Stay tuned.
Yes, Toto, You Are In Kansas But You Still Cannot Infringe. The Ninth Circuit entered the high-stakes world of furniture sales in Stone Creek, Inc. v. Omnia Italian Design, Inc., 862 F.3d 1131 (9th Cir. July 11, 2017). Stone Creek is a well-developed furniture mark in Arizona, yet Omnia thought the Midwest was remote enough that they could just copy Stone Creek’s logo there on their own furniture. Omnia was quite open about it, contending that they get to hide behind the Tea Rose–Rectanus defense, which essentially absolves one from trademark infringement liability if the infringing area is geographically remote. Where Omnia went wrong, however, is that they lacked in good faith required for the defense, since they knew full well of Stone Creek’s prior use. And let’s face it: calling the Midwest a “remote geographic area” will never carry the day.
The One Time When a Big Studio Actually Lost in the Ninth Circuit. Yes, we have seen the day when the Ninth Circuit actually handed down a loss to a major studio. It happened in Jordan-Benel v. Universal City Studios, Inc., __ F.3d __, 2017 WL 2637350 (9th Cir. June 20, 2017), which is an idea theft suit for the box-office horror smash the Purge. The studio attempted to SLAPP the plaintiff out of court, contending that it exercised its First Amendment rights to filmmaking by making the picture. Not so fast, concluded the Ninth Circuit, since it found that the suit arose out of the studio’s failure to pay for the idea rather than its filmmaking. This suit is also an interesting example of an idea theft suit employing a breach of contract claim rather than a copyright infringement cause of action: plaintiffs’ bar is getting creative, given the difficulty of proving infringement. Truly, it is the innovation that keeps the law alive.
How Fair is Fair Use? The U.S. Supremes might have effectively tripped up dancing babies everywhere by refusing to review the Ninth Circuit’s decision in Lenz v. Universal Music Corp., 815 F.3d 1145, 1150 (9th Cir. 2015), cert. denied sub nom. Lenz v. Universal Music Corp, 2017 WL 2621318 (U.S. June 19, 2017). Lenz is a mother who in 2007 posted a YouTube video of her then toddler dancing to Prince’s 1984 hit, “Let’s Go Crazy.” The video was removed after Universal notified YouTube that it infringed its rights. The Ninth Circuit tipped the balance in Universal’s favor by ruling that fair use of any copyrighted material depends on the copyright owner’s subjective belief. In other words, as long as Universal actually believed that the use was not fair, its takedown notice would stand. The case is now on the way to trial for Lenz to show that Universal actually knew that it was wrong to take down the dancing tyke.
Offend Away. The U.S. Supremes say you have a Free Speech right to offensive trademarks in Matal v. Tam, __ U.S. __, 137 S. Ct. 1744 (June 19, 2017). In this case, the Asian-American frontman for a rock band entitled the Slants argued that he had the right to trademark his band’s moniker in an effort to reclaim a stereotype. Justice Alito writing for the Court agreed, stating that “[s]peech may not be banned on the ground that it expresses ideas that offend.” Aside from potentially alleviating a great deal of confusion at the U.S. Patent and Trademark Office resulting from controversial trademarks, this opinion may also help the NFL’s Washington Redskins down the road, whose own marks were canceled for being disparaging to Native Americans. Clearly, the current landscape of political correctness is about to undergo a significant transformation under this new Law of the Land. Stay tuned.
Good Faith Cannot Rewrite Your Contract. It is almost summer, and the dearth of appellate decisions this month shows it. Division Two of the Second Appellate District seems to be the only one busy with relevant cases this month, ruling that a co-producer of a Jimi Hendrix concert movie did not breach the contract by refusing a distribution offer that would have spelled out a limited release for the film. In Experience Hendrix, LLC v. Last Experience, Inc., Case No. B268414 (May 8, 2017), the court rejected the other co-producer’s argument that the implied covenant of good faith and fair dealing supplies a nonexistent contractual term requiring acceptance of the offer. Similarly, any “reasonableness” limitations should have been written into the contract: “The parties knew how to impose a reasonableness requirement when they wanted one; we must give effect to their decision not to place one in the approval provision.” In other words, put it in writing.
When Speech Does Not Translate Into SLAPP. California State University cannot SLAPP out of court one of its professors who sued for wrongful denial of tenure. The Supremes ruled as much in Park v. Bd. of Trustees of California State Univ., 2 Cal. 5th 1057 (May 4, 2017). The court found that the professor’s claim, which was based on allegations that Caucasian professors with worse records got promoted over the plaintiff, who is of Korean origin, did not actually arise from any protected activity. This is because the claim arises from the tenure decision itself and the motives underlying that decision—not from the various communications surrounding it. The court rejected the University’s arguments that the tenure decision was inextricably linked with the underlying communications and that the decision itself necessarily triggered public interest: public interest alone does not suffice, unless the tenure decision furthered the University’s free speech rights.
Oh Yes They Did! In this Ninth Circuit-centric month, the court held that LiveJournal’s moderators can be the website’s agents for purposes of an infringement suit by notorious paparazzi over a photo of Beyonce bearing the photographer’s watermark. The Ninth Circuit reversed a summary judgment ruling based on this conclusion in Mavrix Photographs, LLC v. LiveJournal, Inc., 853 F.3d 1020 (9th Cir. 2017), finding that the moderators of the popular Oh No They Didn’t! community devoted to celebrity gossip can subject the website to liability for copyright infringement. Although they are volunteers, “LiveJournal relies on moderators as an integral part of its screening and posting business model.” The court concluded that this gate-keeping function makes any takedown notice under the Digital Millennium Copyright Act unnecessary, since the moderators’ knowledge of the infringing material gets imputed to the website. Lesson learned: either get rid of moderators altogether or pay them enough to pay attention.
License to Commission. The Ninth Circuit has no problems with California's Talent Agencies Act (TAA), which leaves unlicensed personal managers in the dust when it comes to collecting commission on their talent’s work. In National Conference of Personal Managers, Inc. v. Brown, No. 15-56388, 2017 WL 1457037 (9th Cir. Apr. 25, 2017), the court rejected a slew of challenges to the statute, ranging from the dormant Commerce Clause to due process. Interestingly, the plaintiff also asserted the First Amendment challenge to the statute, albeit unpersuasively: “We agree with the district court that the TAA regulates non-expressive conduct, not speech …. Because the TAA ‘regulates a professional practice that is not inherently expressive, it does not implicate the First Amendment.’ It is only subject to rational basis review, which it survives."
How To Lose Billions in Claims Against Disney. In Mathew v. Walt Disney Company, No. 15-56726, 2017 WL 1629070 (9th Cir. May 2, 2017), the Ninth Circuit hands a major victory to Disney, finding that the alleged author of the copyrighted material that serves as the basis for Disney’s ever popular Pirates of the Caribbean franchise waited too long to reassert his claims against the company. Although this opinion technically spills into the next month, we simply could not wait to tell you that delay spells doomsday for your claims when Disney keeps making money off your creation and you say nothing for years. This holds true even if you actually asserted your claims in court and then withdrew them, signing a release agreement upon dismissal, as Mr. Mathew did here. Your rescission claims based on fraudulent misrepresentations brought years after the release will suffer the fate of “too little, too late,” as they did here.
Boxing SLAPP-style. As the SLAPP-jurisprudence is still as fertile as ever, the latest opinion on the subject comes from Division Seven of the Second Appellate District, proving that boxers' break-ups are newsworthy, but their newsworthiness has its limits. In Jackson v. Mayweather, Jr., Case No. B266466 (Mar. 27, 2017), the court affirmed what everyone suspected all along: all celebrity gossip is SLAPP-worthy. Floyd Mayweather can thus freely mouth off in public about the reasons he broke up with his girlfriend. But posting a sonogram to prove she had an abortion is going too far, as it “served no legitimate public purpose, even when one includes entertainment news within the zone of protection” and was thus “outside the protection afforded a newsworthy report.” As such, it was not a complete knockout for the former boxing champion, but most of the claims here did get SLAPPed out of court after all.
When the Contract Does Not Mean What It Says. Division Seven also handed a stunning defeat to Disney this month in Wind Dancer Prod. Grp. v. Walt Disney Pictures, Case No. B262426 (Mar. 22, 2017). The case arose out of the hit show Home Improvement. The writers and producers brought claims focusing on their profit participation statements that undervalued their participation rights. The case was dismissed below over the plaintiffs’ failure to abide by the “incontestability” clause in their contracts that set a time limit for bringing claims. Although plaintiffs argued that the studio orally waived the condition, the trial court ruled that the argument was precluded by the contract that required any modifications to be in writing. The court of appeals reversed, holding that Disney’s conduct in delaying the audit process may provide sufficient basis to stop the studio from invoking the “incontestability” clause. Moreover, the “no oral modification” clause itself may be waived by words or conduct, which turns the clause into an empty gesture for any future contract drafting in California.
C-O-P-Y-R-I-G-H-T! The United States Supreme Court thinks cheerleader uniforms deserve protection, finding them to be “two- or three-dimensional work of art” in Star Athletica, L.L.C. v. Varsity Brands, Inc., Case No. 15-866 (U.S. Mar. 22, 2017). Writing for the majority, Justice Clarence Thomas concluded that arrangement of stripes, chevrons and color blocks on cheerleader uniforms is entitled to copyright protection. The main issue here was whether the design could be separated from its utilitarian purpose: would anyone find it aesthetically interesting as opposed to simply useful? The Court ruled that the arrangement was artistic enough to be copyrightable because “when identified and imagined apart from the useful article, it would qualify as a pictorial, graphic, or sculptural work either on its own or when fixed in some other tangible medium.” In other words, go, Supremes, go!
Back in the SLAPP land, all jokes aside. In this relatively quiet month for appellate news, our first entry comes from the ever-prolific anti-SLAPP jurisprudence and involves one of the Wayans brothers. In Daniel v. Wayans, 8 Cal. App. 5th 367 (Feb. 9, 2017), Division One of the Second Appellate District affirmed the trial court’s dismissal of a lawsuit against Marlon Wayans. Plaintiff in this case, an African-American actor, brought claims based on certain (allegedly) offensive racial slurs directed at him by Marlon on the set of Marlon’s movie, Haunted House 2, as well as through Marlon’s tweets. The most notable strain of reasoning here was the appellate court’s determination that Marlon’s speech was SLAPP-worthy just because this was a movie sequel after all. As such, whatever creative process Marlon utilized for this movie, it must have involved a matter of public interest! As for the second prong of the anti-SLAPP analysis, the court essentially concluded that Marlon has a First Amendment right to be funny, thus presumably paving the way for Haunted House 3.
Big Pimpin', Not So Big in Egypt. Jay-Z and Timbaland are still stuck in the Ninth Circuit over their hit Big Pimpin' in a court battle that took over eight years to get to trial below. The case centers on a sample of an Egyptian 1957 song Khosara Khosara, which is the main hook in Big Pimpin'. And while the Egyptian song at issue now appears to have been validly licensed, the heirs of the song writer raise an interesting issue on appeal. In their latest brief filed in Osama Ahmed Fahmy v. Jay-Z (aka Shawn Carter) et al., Case No. 16-55213 (9th Cir.), they argue that the license could not have authorized Jay-Z and Timbaland to turn a chaste romantic ballad into rhymes about “hoes, drugs and spendin’ cheese.” In other words, the song writer’s family now raises moral objections to their family name being associated with Big Pimpin'. It remains to be seen whether this concept gets any recognition from the Ninth Circuit, which would dramatically alter the landscape of music licensing. Stay tuned.
On the mark, ready, SLAPP. In our first entry for this SLAPP-happy month, the Ninth Circuit affirms denial of an anti-SLAPP motion below in Safari Club Int’l v. Rudolph, No. 14-56236 (9th Cir. Jan. 18, 2017). The case involved an award-winning hunter, who had sued his hunting club for exiling him and then lured the club’s president to lunch to discuss the pending lawsuit, all the while surreptitiously recording their conversation so that he could post it on YouTube later. The opinion is remarkable in itself for its many hunting references alone: the Ninth Circuit wrote that “the season opened” with defendant’s own suit, defendant lured the club’s president to lunch “[w]ith his quarry in sight,” the club “fired back … with a barrage of legal claims,” and defendant “seeks to line up the perfect shot” on appeal, although his “marksmanship, apparently on target in the tundra, here is wide off the mark.” The hunting lingo aside, the opinion confirms that winning on the first “public interest” prong of the SLAPP analysis, as defendant did here (since the issues were of interest to a broad segment of society), does not guarantee SLAPPing your plaintiff out of court. Indeed, as the Ninth Circuit confirmed here, there is a reasonable expectation of privacy in a lunch conversation that allowed the club and its president to move forward on their invasion of privacy claims.
No jurisdiction, no problem. The Supremes confirm this month that you can get your attorney’s fees for prevailing on an anti-SLAPP motion even if the court lacks subject matter jurisdiction over plaintiff’s claims in the first place. In Barry v. State Bar of California, 2 Cal. 5th 318 (Jan. 5, 2017), an attorney disciplined by the State Bar sought to set aside the stipulation reached on her disciplinary charges, and the State Bar SLAPPed her out of court for lack of jurisdiction, since the State Bar has exclusive jurisdiction over attorney discipline matters. Reversing the appellate court contrary determination, the California Supreme Court held that if the trial court below had jurisdiction to deny the motion for lack of jurisdiction, it was also empowered to award attorney’s fees to the successful SLAPPer.
Keep your anonymous speakers alive—at least through your SLAPP appeal. James Woods means business. If you call the famous actor a “cocaine addict” online, he will “follow you to the bowels of Hell,” if not beyond. And courts would let him, too. When the anonymous poster’s lawyers attempted to SLAPP Woods’ $10 million defamation suit, the trial court denied the motion. The resulting appeal was dropped because the anonymous speaker died while the appeal was pending, thus eradicating his privacy interests. On January 3, 2017, the anonymous speaker’s attorneys were ordered to reveal their client’s identity in Woods v. John Doe, Case No. BC589746 (Cal. Super. Ct.). Sure, this entry involves no actual appellate decisions, yet we thought you should be warned to stay away from Woods’ Twitter account from now on—just to be on the safe side.
No SLAPP here. Our sole non-SLAPP entry of the month hands a major defeat to Perfect 10, an adult images website, that accused a Usenet provider of contributory copyright infringement when the images surfaced in some of its Usenet posts. The Ninth Circuit in Perfect 10, Inc. v. Giganews, Inc., No. 15-55500 (9th Cir. Jan. 23, 2017), decided that defendant failed to cross the required “volitional conduct” threshold by merely providing a platform for the exchange of the posts in question. Giganews walked away with over $5.5 million in attorney’s fees awarded against Perfect 10 under the Copyright Act, proving that sometimes defending your right not to get involved can be just as important in the whole scheme of copyright protections as protecting your creativity.
No Press Pass for CNN to Discriminate Against Its Employees. Stanley Wilson, a fired African-American Emmy Award-winning producer, gets to proceed with his employment discrimination suit against CNN, and the news station cannot hide behind the SLAPP statute, says Division One of the California Second Appellate District in Wilson v. Cable News Network, Inc., No. B264944 (Dec. 13, 2016). Just because CNN “shapes the news,” it does not mean that it should enjoy special privileges for discriminatory decisions as to who gets to report the news. After all, as the court concluded, “[t]he press has no special immunity from generally applicable laws.” In similar vein, CNN cannot freely bad-mouth its fired employees just because their job relates to issues of public interest: after all, their fitness to shape CNN broadcasts is a private matter that should remain between them and CNN.
American Idol is Still Interesting. On the opposite end of the SLAPP spectrum, Radar Online scores a get-out-of-court-free card from Division Three of the California Second Appellate District in Clark v. Radar Online, LLC, No. B264085 (Nov. 30, 2016). The court found that an American Idol contestant’s disqualification from the show due to reports that he had battered his sister was a matter of public interest. The interest in the show is widespread enough to rebut Clark’s claims that the matter was only relevant to a limited portion of the public (people who watch American Idol). Analyzing the publication as a whole (rather than parsing it out, as the trial court had done), the court also concluded that the publication was likely not actionable as defamatory because Clark failed to show that he never beat up his sister. It seems that if Clark sued to clear his name, it was advisable to make (at least) some showing that the battery allegations were untrue in the first place.
Football Coaches are Interesting, Too. Continuing with this month’s SLAPP extravaganza, Division Three of the California Second Appellate District in McNair v. Superior Court, No. B275282 (Dec. 23, 2016), had to deal with the fallout from its earlier SLAPP decision finding USC assistant coach to be a limited public figure for purposes of proving defamation damages. As a result, some of McNair’s claims were lost on appeal and some went forward. The case came back up when the NCAA attempted to exercise its second preemptory challenge against the presiding judge, and the Court of Appeals rejected that challenge, since the previous SLAPP ruling did not result in a reversal of a “final judgment.” Lesson learned: you do not get to keep changing referees in the middle of a game.
October - November 2016
Caveat Sectorem – “Broker Beware.” A broker missed out on a $925,000 commission on the purchase of a $45-million Bel Air estate for a friend because he failed to get the brokerage agreement in writing as required by California’s statute of frauds, says Division Two of the California Second Appellate District in Westside Estate Agency, Inc. v. Randall, No. B268455 (Dec. 1, 2016). Turns out, even for real estate transactions among friends, you need to get it in writing.
Real estate investors beware. Continuing with the real estate theme, an escrow company did not owe a duty of care to a non-party financier who was not listed as a third-party beneficiary of an escrow agreement in a real estate transaction. The California Third Appellate District in Alareza v. Chicago Title Company, Case No. C075547 (Nov. 16, 2016), says that even though the non-party suffered losses due in part to the escrow company’s admitted negligence in misidentifying an escrow purchaser in some insurance paperwork, the causal connection between this misidentification and the nonparty’s losses was too tenuous to impose liability. Once again, when seeking to create a legal relationship and head off future problems, the rule of thumb is to get it in writing.
Why your doorman matters (and it is not too late to buy him a Christmas gift). In Stroud Prods. & Ents. Inc. v. Castle Rock Ent. Inc., Case Nos. 14–16421 & 14–16422 (9th Cir. Oct. 25, 2016), the wife of Nina Simone's late husband, Andrew Stroud, argued that there was no jurisdiction over her due to, in part, improper personal service. In reviewing the efforts to serve her in New York, the court approved of the diligent efforts to serve her four times (including on a Saturday) and rejected her arguments that the papers needed to be left with the doorman because the doorman did not block access to her unit. As it turns out, if you live in an apartment building and your doorman does not block access at the entrance, then the entrance point is not your “actual dwelling” for purposes of personal service.
Get your alter ego early. Division Four of the California Second Appellate District in Wolf Metals Inc. v. Rand Pac. Sales, Inc., Case No. B264002 (Oct. 25, 2016), says that due process precludes you from adding an alter ego of your defendant to a default judgment. Luckily, if you are trying to add a successor company, it is another matter altogether, as long as the additional proposed judgment debtor is nothing but a “mere continuation” of the original defendant.
How not to lose $3 million in attorney’s fees. After allegedly losing millions of dollars in a hedge fund, investors sued the fund's administrator for breach of contract. The fund administrator won on summary judgment below and got awarded $3,027,237.96 in attorney’s fees under a contractual provision entitled "Standard of Care," which provides the administrator with the indemnity right for losses, including reasonable attorney’s fees pertaining to administration of the fund. Division One of the California Fourth Appellate District says “not so fast” in Alki Partners, LP v. DB Fund Servs., LLC, Case No. D068063 (Oct. 24, 2016). Reversing the award of attorney’s fees, the court explained that because the contractual language relied upon was a third-party indemnity provision, it did not create a right to attorney’s fees in litigation between the parties to the contract. But it was an easy fix for any transactional attorney worth his salt, as the court went on to observe that “[i]t would have been simple for the parties to provide: If any action is commenced to enforce or interpret the terms of this agreement, the prevailing party shall be entitled to recover reasonable attorney fees.”
August - September 2016
Your Class Action Waiver is No Good. The Ninth Circuit says mass employee class action waivers signed as condition of employment violate the National Labor Relations Act in Morris v. Ernst & Young, LLP, No. 13-16599 (9th Cir. Aug. 22, 2016). It is not a problem that the waiver directs the claims into arbitration: as long as employees can proceed by concerted action, they can be compelled to arbitrate. The bottom line is that your employees have a core right to proceed together, unless you are somehow exempted from the Act’s coverage.
Your Arbitration Agreement is No Good. Continuing with the theme of employment relations, your Employee Handbook does not create a binding agreement to arbitrate, says Division Four of the California Second Appellate District in Esparza v. Sand & Sea, Inc., No. B268420 (Aug. 22, 2016). Even if the employee signs the handbook acknowledgement form, this does not create a mutual agreement to arbitrate. The court went on to note that if the policy acknowledgement form provided clear notice that certain handbook provisions would create binding commitment after the employment ends and required all the employees to familiarize themselves with the handbook’s contents before signing the acknowledgement form, the arbitration provisions might have been upheld after all.
Your Suspended Corporation Cannot Defend Itself in a Lawsuit. The San Diego City Attorney learned this the hard way. In City of San Diego v. San Diegans for Open Gov't, No. D068939 (Sept. 22, 2016), Division One of the California Fourth Appellate District stripped him of a quarter million dollars in attorney’s fees for filing an answer on behalf of a suspended corporation. Even if your corporation gets revived along the way, it is its status during the relevant court appearance period that matters.
Keep Your Vogue On, Madonna. Ms. Ciccone’s hit is safe from claims of copyright infringement, but she cannot collect on her $720,000 attorney’s fee award after all. Following the Ninth Circuit’s decision back in June 2016 that the quarter-note single horn hit, full measure containing rests, and double horn hit from musical composition “Ooh I Love It (Love Break)” in Madonna’s Vogue was de minimis usage that does not rise to the level of copyright infringement, see VMG Salsoul, LLC v. Ciccone, 824 F.3d 871 (9th Cir. 2016), on September 23, 2016, the district court judge rained on Madonna’s parade by stripping her of her attorney’s fees award. The decision was based on the court’s finding that the suit was not entirely frivolous, while keeping the award would deter possibly meritorious copy right infringement claims. Lesson learned: while this was admittedly a close case, the district judge’s decision encourages de minimis infringement suits for years to come.