                                                                             FILED
                           NOT FOR PUBLICATION                               AUG 22 2014

                                                                          MOLLY C. DWYER, CLERK
                    UNITED STATES COURT OF APPEALS                         U.S. COURT OF APPEALS



                           FOR THE NINTH CIRCUIT


PAULA PETRELLA, an individual,                  No. 10-55834

             Plaintiff - Appellant,             D.C. No. 2:09-cv-00072-GW-
                                                MAN
       v.

METRO-GOLDWYN-MAYER, INC., a                    MEMORANDUM*
corporation; METRO-GOLDWYN-
MAYER STUDIOS, INC., a corporation;
METRO-GOLDWYN-MAYER HOME
ENTERTAINMENT, LLC, a limited
liability company; METRO-GOLDWYN-
MAYER HOME ENTERTAINMENT
DISTRIBUTION CORPORATION, a
corporation; UNITED ARTISTS
CORPORATION, a corporation; 20TH
CENTURY FOX HOME
ENTERTAINMENT, LLC, a limited
liability company,

             Defendants - Appellees.

PAULA PETRELLA, an individual,                  No. 10-55853

             Plaintiff - Appellee,              D.C. No. 2:09-cv-00072-GW-
       v.                                       MAN

METRO-GOLDWYN-MAYER, INC., a

        *
        This disposition is not appropriate for publication and is not precedent
except as provided by 9th Cir. R. 36-3.
corporation; METRO-GOLDWYN-
MAYER STUDIOS, INC., a corporation;
METRO-GOLDWYN-MAYER HOME
ENTERTAINMENT, LLC, a limited
liability company; METRO-GOLDWYN-
MAYER HOME ENTERTAINMENT
DISTRIBUTION CORPORATION, a
corporation; UNITED ARTISTS
CORPORATION, a corporation; 20TH
CENTURY FOX HOME
ENTERTAINMENT, LLC, a limited
liability company,

              Defendants - Appellants.

                 On Remand from the United States Supreme Court

Before: W. FLETCHER and FISHER, Circuit Judges, and ZOUHARY, District
        Judge.**

      On remand from the Supreme Court, the defendants argue that even though

the plaintiff’s claim for copyright infringement is not barred by laches, the district

court’s grant of summary judgment in their favor should nevertheless be affirmed

on alternative grounds. We vacate the grant of summary judgment on the




       **
        The Honorable Jack Zouhary, District Judge for the U.S. District Court for
the Northern District of Ohio, sitting by designation.

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plaintiff’s copyright claim and remand for further proceedings consistent with this

decision.1

      1. Because the plaintiff, Paula Petrella, failed to timely renew the copyright

term for the book and the 1973 screenplay, her copyright claim must rest on the

1963 screenplay. See 17 U.S.C. § 304(a)(4)(A). We reject the defendants’

argument that Petrella’s failure to renew the other two works makes baseless her

claim for copyright infringement of the 1963 screenplay. First, the scope of the

defendants’ license to use the content of the book under 17 U.S.C. § 304(a)(4)(A)

turns on the scope of copyright protection in the book. In turn, the scope of

copyright protection in the book depends on whether the 1963 screenplay was

based on the book or vice versa: if the book was original and the 1963 screenplay

was a derivative work based on it, then all of the book is entitled to copyright

protection, but if the book was a derivative work based on the 1963 screenplay,



      1
         Nothing in the Supreme Court opinion affects our holdings that Petrella’s
claims for unjust enrichment and for an accounting are barred by laches, and that
the district court did not abuse its discretion by denying the defendants’ motions
for attorney’s fees and for sanctions. See Petrella v. Metro-Goldwyn-Mayer, Inc.,
134 S. Ct. 1962 (2014). For the reasons stated in our earlier opinion, we therefore
affirm the grant of summary judgment on those two claims, and affirm the district
court’s denial of the defendants’ motion for sanctions. See Petrella v. Metro-
Goldwyn-Mayer, Inc., 695 F.3d 946, 956-57 (9th Cir. 2012). We also affirm the
district court’s denial of the defendants’ motion for attorney’s fees. That motion is
premature because litigation of Petrella’s copyright claim is ongoing.

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then only the new elements in the book are entitled to copyright protection. The

parties vigorously dispute this issue. See infra. Therefore, the defendants’ renewal

argument is encompassed by the parties’ other arguments, and does not provide an

independent basis for precluding Petrella from litigating her claim for copyright

infringement of the 1963 screenplay. Second, the record does not support the

defendants’ assertion that all three works are “virtually indistinguishable from one

another.” This argument therefore at most limits the scope of Petrella’s copyright

interest to any protectible elements that are in the 1963 screenplay, but not in the

book or the 1973 screenplay. For both of these reasons, we do not affirm the grant

of summary judgment on this alternative ground.

      2. Although the title page to the 1963 screenplay stated that it had been

written by Frank Petrella “in collaboration with Jake La Motta,” its copyright

registration listed Frank Petrella as the claimant and sole author. Accordingly,

whether the 1963 screenplay was a work of sole or joint authorship is a genuinely

disputed material fact that precludes affirming the grant of summary judgment on

this basis. See Fed. R. Civ. P. 56(a).

      3. Frank Petrella and Jake La Motta represented in the 1976 agreement that

the book was original and had not been copied or adapted from any other work, but

the book was published seven years after the 1963 screenplay was registered, and


                                          4
includes references to events occurring after 1963. Therefore, on this record, the

district court correctly determined there is a genuine dispute whether the 1963

screenplay was based on the book or vice versa.

       4. The district court erred, however, when it concluded the defendants had

not made the argument that Petrella should be estopped from contradicting her

father’s representations in the 1976 agreement that the book was original. In fact,

the defendants argued: “Plaintiff should be estopped, as a threshold matter, from

contradicting her father’s written contractual representations, because she is his

privy and is suing based on his alleged rights.” We decline to exercise our

discretion to decide this issue in the first instance, and instruct the district court to

address this argument on remand.

       5. We also decline to reach the remaining issues argued by the defendants.

If the district court concludes Petrella is estopped from arguing that the book was

based on the 1963 screenplay, the scope of the substantial similarity comparison

will be significantly affected, and the question of whether the book’s copyright

protection extends to elements incorporated from the 1963 screenplay would

become moot.

       6. However, the district court’s substantial similarity analysis did not apply

the extrinsic test required by our precedent – perhaps because summary judgment


                                            5
turned on a different ground. See Benay v. Warner Bros. Entm’t, Inc., 607 F.3d

620, 624 (9th Cir. 2010) (noting that “[o]n a motion for summary judgment, we

apply . . . the extrinsic test,” and explaining that “[t]he extrinsic test is an objective

test based on specific expressive elements: the test focuses on articulable

similarities between the plot, themes, dialogue, mood, setting, pace, characters, and

sequence of events in two works” (quoting Kouf v. Walt Disney Pictures &

Television, 16 F.3d 1042, 1045 (9th Cir. 1994)) (internal quotation marks

omitted)). Accordingly, after it resolves the estoppel argument on remand, the

district court shall apply the extrinsic test to compare the film against the protected

elements, if any, covered by Petrella’s copyright interest. See id. at 624-25.

       We therefore affirm the grant of summary judgment on Petrella’s unjust

enrichment and accounting claims, vacate the grant of summary judgment on her

copyright claim and affirm the denial of the defendants’ motions for sanctions and

attorney’s fees. We remand for further proceedings, during which the district court

shall consider the defendants’ estoppel argument and conduct a substantial

similarity comparison applying the extrinsic test.

       Each party shall bear its own costs on appeal.

AFFIRMED IN PART, VACATED IN PART AND REMANDED.




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