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Title: Alex Borden v. Devin Horwitz

December 19, 2012

TITLE: ALEX BORDEN
v.
DEVIN HORWITZ, ET AL.



The opinion of the court was delivered by: Honorable Michael W. Fitzgerald, U.S. District

JS-6

CIVIL MINUTES -- GENERAL

PRESENT: HONORABLE MICHAEL W. FITZGERALD, U.S. DISTRICT

JUDGE

Rita Sanchez None Present Courtroom Deputy Court Reporter ATTORNEYS PRESENT FOR PLAINTIFF: ATTORNEYS PRESENT FOR DEFENDANTS: None Present None Present

PROCEEDINGS (IN CHAMBERS): SUPPLEMENTAL ORDER GRANTING DEFENDANT DAH, INC.'S MOTION FOR SUMMARY JUDGMENT [165], AND DISMISSING ACTION WITHOUT PREJUDICE

On January 27, 2010, Plaintiff Alex R. Borden filed a First Amended Complaint ("FAC"), alleging three claims for relief. (Docket No. 7). On July 23, 2012, Defendant DAH, Inc. filed a Motion for Summary Judgment (the "Motion"). (Docket No. 165). On September 20, 2012, the Court granted in part the Motion (the "September 20 Order"). (Docket No. 182). The Court dismissed the first claim for relief for copyright infringement, ruling that Borden lacked standing to bring this claim because the relevant works never were registered. (Id. at 8).

In addition, the Court ordered supplemental briefing on Borden's two remaining claims, which are based on California law: the second claim for declaratory and injunctive relief as to the invalidity of the so-called "2005 Agreement"; and the third claim for restitution. (Id. at 8-9). The parties have submitted this supplemental briefing. (Docket Nos. 183-87). The Court has read and considered the supplemental briefing on this Motion and deems the matter appropriate for decision without oral argument. See Fed. R. Civ. P. 78(b); Local Rule 7-15.

This Order presumes a familiarity with the September 20 Order and consequently will not repeat the relevant facts or procedural history.

As a threshold matter, it is clear that the Court has subject matter jurisdiction over this action based on Borden's claim for copyright infringement. See Reed Elsevier, Inc. v. Muchnick, 130 S. Ct. 1237, 1246, 176 L. Ed. 2d 18 (2010) ("Federal district courts have subject-matter jurisdiction over copyright infringement actions based on 28 U.S.C. §§ 1331 and 1338."). Jurisdiction remains after the Court's grant of summary judgment on the first claim. See id. at 1247 ("The registration requirement . . . imposes a type of precondition to suit that supports non-jurisdictional treatment under our precedents."). Likewise, it is clear that the Court can exercise supplemental jurisdiction over Borden's state law claims pursuant to 28 U.S.C. § 1367.

According to Borden's second claim for relief, a "judicial determination and declaration is necessary and appropriate at this time as to the import and effect of the [2005] Agreement and the respective rights of the parties thereunder, so that [Decedent James Yancey's Estate] is not further burdened by the unsettled state of affairs of the Decedent's intellectual property rights and so the Estate may exercise its right to contract with future parties without interference by Defendants." (FAC ¶ 49 (emphasis added)). Essentially, Borden seeks a declaration that, because the 2005 Agreement is unenforceable, Defendants have no right to Yancey's subject works; or, stated differently, that Defendants have infringed on Yancey's works because the 2005 Agreement did not grant Defendants any rights to Yancey's works.

In Hal Roach Studios, Inc. v. Richard Feiner and Co., Inc., 896 F.2d 1542 (9th Cir. 1990), the parties entered into a written license agreement for the television rights to certain films. Id. at 1544. The plaintiff-appellee filed a lawsuit seeking a declaration that the licensing agreement would expire on a certain date and that it had valid copyrights to the films. Id. at 1544-45. The defendant-appellant asserted an affirmative defense that the plaintiff did not own valid copyrights in a number of the relevant films. Id. at 1545. The district court struck this affirmative defense and granted judgment in favor of the plaintiff. Id. at 1545-46.

The Ninth Circuit reversed, concluding that the "district court erred in striking as an affirmative defense to [the] declaratory judgment action [the defendant's] contention that [the plaintiff] does not own valid copyrights to the [films]. . . . if the copyrights are invalid, there would be no 'actual controversy' between these parties as required for a declaratory judgment." Id. at 1553 ("It is clear that an assertion that [the plaintiff's] copyrights to the [films] were invalid would be a ...


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