James Kodadek v. Mtv Networks, Inc., a Corporation Viacom International, Inc., a Corporation Mike Judge

Citations: 152 F.3d 1209; 1998 WL 547104; 47 U.S.P.Q. 2d (BNA) 1956; 98 Daily Journal DAR 9445; 98 Cal. Daily Op. Serv. 6765; 1998 U.S. App. LEXIS 21175Docket: 97-55238

Court: Court of Appeals for the Ninth Circuit; August 31, 1998; Federal Appellate Court

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James Kodadek appeals the Ninth Circuit's affirmation of a summary judgment in favor of MTV Networks, Inc., Viacom International, Inc., and Mike Judge. Kodadek claims to have created drawings of the characters "Beavis and Butthead" in 1991, which he alleges were later used in Viacom's 1993 show without his permission. He obtained a copyright registration in 1995 but attempted to deposit different drawings from 1993 to meet the registration requirements, stating the creation year as 1991.

Kodadek filed a copyright infringement and unfair competition lawsuit in February 1996, but did not initially request a jury trial. His subsequent motion to amend the complaint to include a jury demand was denied by the district court, which found the failure to be timely due to his attorney's inadvertence. The court ruled that copyright registration is necessary for infringement lawsuits, but not for the validity of the copyright itself. It also emphasized that registration requires the deposit of "bona fide copies" of the original work, distinguishing them from mere reconstructions.

The court referenced a similar case, Seiler v. Lucasfilm, where the plaintiff’s later drawings were deemed insufficient for copyright registration, as they were not the original works. The Ninth Circuit ultimately upheld the lower court's decision, emphasizing the importance of compliance with copyright registration requirements.

The district court conducted an evidentiary hearing to determine the admissibility of reconstructions of original drawings by Seiler, which he claimed had been lost or destroyed in bad faith. The court applied the Best Evidence Rule under Fed.R.Evid. 1004(1) and ruled that secondary evidence, including the reconstructions deposited with the Copyright Office, was inadmissible for proving the content of the originals. Consequently, the court granted summary judgment in favor of Lucasfilm, Ltd. 

The appellate court affirmed this decision, agreeing with the district court's interpretation of the Best Evidence Rule and found that 17 U.S.C. 410(c) regarding copyright registration did not apply for two reasons. First, the statements in the registration certificate related to reconstructions, not the original works, and Seiler failed to prove that these reconstructions were "virtually identical" to the originals. Kodadek argued he should have been allowed to present eyewitness testimony to this effect, but this argument was undermined by the fact that he lacked a valid copyright certificate.

Second, the court determined that the Copyright Act does not allow for the registration of a non-existent original based on a reconstruction. Section 408 requires the deposit of bona fide copies of the original work, explicitly excluding reconstructions to prevent potential fraud. As Seiler did not correctly register his original drawings, the certificate was not valid evidence of copyright.

Kodadek claimed he could reproduce his 1991 drawings from memory in 1993. However, for copyright registration, such reproductions are inadequate, as they must be based on direct reference to the original or its bona fide copies. The court concluded that Kodadek's 1993 drawings, created from memory, were merely reconstructions and not valid copies for copyright purposes, leading to the conclusion that he did not receive proper copyright registration, thus barring his infringement claim.

Kodadek's complaint asserts an unfair competition claim under California Business and Professions Code § 17200 et seq. The district court granted summary judgment in favor of the defendants, ruling that the claim was preempted by the federal Copyright Act, thus not necessitating a review of its merits. Preemption occurs when two conditions are satisfied: the state law rights claimed must be equivalent to those protected under the Copyright Act, and the work in question must fall within the Copyright Act's subject matter. 

Kodadek's claim alleges that the defendants published and sold products bearing images that are subject to his copyright, constituting unfair trade practices. This claim references the copyright infringement allegations, where he states that the defendants released unauthorized derivatives of his drawings. The unfair competition claim is explicitly based on rights granted by the Copyright Act, which include reproduction, derivative works, public distribution, and display rights. 

Kodadek aims to protect his 1991 drawings, which are recognized as copyrightable pictorial works, thereby satisfying the subject matter requirement of the Copyright Act. Consequently, both prongs of the preemption test are met, leading to the conclusion that his unfair competition claim is preempted. The court affirms the district court's summary judgment favoring the defendants and does not consider Kodadek's argument regarding the denial of his motion to amend his complaint for a jury trial, as the summary judgment was deemed appropriate.