                           NOT FOR PUBLICATION                           FILED
                    UNITED STATES COURT OF APPEALS                        MAY 2 2017
                                                                      MOLLY C. DWYER, CLERK
                                                                       U.S. COURT OF APPEALS
                           FOR THE NINTH CIRCUIT

ROYCE MATHEW,                                   No.    15-56726

                Plaintiff-Appellant,            D.C. No.
                                                2:14-cv-07832-RGK-AGR
 v.

THE WALT DISNEY COMPANY et al.,                 MEMORANDUM*

                Defendants-Appellees.

                   Appeal from the United States District Court
                      for the Central District of California
                   R. Gary Klausner, District Judge, Presiding

                       Argued and Submitted April 7, 2017
                              Pasadena, California

Before: CLIFTON and OWENS, Circuit Judges, and ANTOON,** District Judge.

      Plaintiff Royce Mathew appeals from the district court’s grant of Disney’s

motion to dismiss under Federal Rule of Civil Procedure 12(b)(6) and from the

district court’s entry of a consent judgment as to Disney’s counterclaim. As the

parties are familiar with the facts, we do not recount them here. We have


      *
             This disposition is not appropriate for publication and is not precedent
except as provided by Ninth Circuit Rule 36-3.
      **
            The Honorable John Antoon II, United States District Judge for the
Middle District of Florida, sitting by designation.
jurisdiction under 28 U.S.C. § 1291, and we affirm.

      1. Mathew’s nearly four-year delay in providing notice of rescission
substantially prejudiced Disney.

      Mathew learned of Disney’s alleged fraudulent procurement of their mutual

release (the “Release”) on June 1, 2009. As Mathew conceded at oral argument, he

did not provide Disney notice of his intent to rescind the Release until he filed suit

on May 28, 2013, nearly four years after “‘discover[ing] the facts which entitled

him to rescind.’” Citicorp Real Estate, Inc. v. Smith, 155 F.3d 1097, 1104 (9th Cir.

1998) (quoting Cal. Civ. Code § 1691). The notice was not prompt.

      California Civil Code § 1693 provides that a claim for rescission “shall not

be denied because of delay in giving notice of rescission unless such delay has

been substantially prejudicial to the other party.” Cal. Civ. Code § 1693. Whether

a party has been substantially prejudiced by a delay is a fact-specific inquiry.

Wilke v. Coinway, Inc., 64 Cal. Rptr. 845, 854 (Ct. App. 1967).

      This court, in the context of laches, has held that substantial prejudice exists

where a defendant shows that during a plaintiff’s delay, the defendant “invested

money to expand its business or entered into business transactions based on its

presumed rights.” Petrella v. Metro-Goldwyn-Mayer, Inc., 695 F.3d 946, 953 (9th

Cir. 2012) (internal quotation marks and alteration omitted), overruled on other

grounds by Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962 (2014); see

also Danjaq LLC v. Sony Corp., 263 F.3d 942, 956 (9th Cir. 2001) (holding that

                                          2
the record supported a finding of economic prejudice where there was

“uncontested evidence” that the defendant invested a billion dollars in developing,

producing, and marketing the James Bond films).

      While a finding of substantial prejudice is generally premature at the

12(b)(6) stage, here the Second Amended Complaint alleges that since May 28,

2010, Disney has continuously exploited the Pirates of the Caribbean Franchise

“in movies, television, on-line streaming, DVD’s, video games, merchandising and

otherwise in connection with . . . public showings, distribution, licensing, and

merchandising,” released a fourth movie in the series, and worked on developing a

fifth movie. These allegations are sufficient to hold that Disney suffered economic

prejudice from Mathew’s delay in seeking rescission because, relying on its

presumed rights, including the comprehensive Release obtained from Mathew,

Disney expended significant resources in developing its Pirates of the Caribbean

Franchise. Accordingly, Mathew cannot rescind the Release.

      2. The district court did not err in entering a consent judgment in favor
of Disney on Disney’s counterclaim.

      “[U]pon agreement of the parties,” the court entered judgment in favor of

Disney on Disney’s counterclaim in the amount of $3,500. A consent judgment

that “appears by the record to have been rendered by consent, is always affirmed,

without considering the merits of the cause.” United States v. Bechtel Corp., 648

F.2d 660, 663 (9th Cir. 1981) (internal quotation marks omitted). Because Mathew

                                          3
does not contest that he consented to the entry of judgment, the consent judgment

must be affirmed.

      AFFIRMED.




                                        4
                                                                             FILED
No. 15-56726, Royce Mathew v. The Walt Disney Co.
                                                                             MAY 02 2017
CLIFTON, Circuit Judge, dissenting:                                      MOLLY C. DWYER, CLERK
                                                                           U.S. COURT OF APPEALS


       I respectfully dissent.

      The majority disposition rests on a determination that Disney was

substantially prejudiced by Mathew’s delay in giving notice of his intent to rescind

the Release. Specifically, the majority concludes, at 3, that “Disney suffered

economic prejudice from Mathew’s delay in seeking rescission because, relying on

its presumed rights, Disney expended significant resources in developing its

Pirates of the Caribbean Franchise.”

      That Disney invested a lot of money to reap the enormous rewards it has

collected from that franchise does not itself establish substantial prejudice,

however. There is a necessary piece missing from that finding. Disney had to

“sho[w] that it took actions or suffered consequences that it would not have, had

the plaintiff brought suit promptly.” Danjaq LLC v. Sony Corp., 263 F.3d 942, 955

(9th Cir. 2001) (emphasis added).

      If Disney would have proceeded with the Pirates of the Caribbean movie

series even if it had known that Mathew would attempt to rescind the Release, then

it cannot establish prejudice from the delay, under California law. The California

Supreme Court said so in Conti v. Bd. of Civ. Serv. Commissioners, 461 P.2d 617,

623 (Cal. 1969), which held: “If the delay has caused no material change in statu
quo, ante, i.e., no detriment suffered by the party pleading the laches, his plea is in

vain.” Our court’s cases construing California law have said as much as well. See

Russell v. Price, 612 F.2d 1123, 1126 (9th Cir. 1979) (“[T]he detriment

[defendant] claims to have suffered as a result of plaintiff’s delay in bringing this

action does not constitute prejudice within the meaning of the laches doctrine.

[Defendants] at no time changed their film distribution activities in reliance on

[plaintiff’s] conduct. [Defendants] cite no case in which a false sense of security

alone has been enough to bar an otherwise proper claim.”); Evergreen Safety v.

RSA Network Inc., 697 F.3d 1221, 1227-28 (9th Cir. 2012) (defendant proved it

was prejudiced by unreasonable delay in suing because defendant “would not have

produced or revised and reproduced the infringing manual multiple times had

[plaintiff] initiated its infringement action” earlier).

       It is hardly obvious that Disney would have abandoned such a lucrative

movie series simply because Mathew threatened to try to rescind the Release.

Mathew did not notify Disney of his claim until after the first, very successful

movie in the series had been released. Substantial revenues had already started

flowing to Disney before the Release was ever negotiated with Mathew. The

second movie in the series, Dead Man’s Chest, was released in July 2006, after

Mathew had made Disney aware of his claim but a year before that Release was

                                             2
signed. It wound up being the number one movie of the year at the box office,

reportedly generating more than one billion dollars in ticket sales worldwide.

Mathew’s complaint alleged that the third movie in the series, At World’s End, was

released in 2007 and also generated more than one billion dollars in box office,

merchandising, and licensing receipts. A fourth movie was released in 2011, and a

fifth is scheduled for release later this year, even while Mathew’s lawsuit is

pending before us. That Disney would not have pursued the Pirates of the

Caribbean franchise if it had known of Mathew’s subsequent intent to try to

rescind the Release is more than a little implausible.

      More to the point, that is a factual determination that cannot properly be

made on a motion to dismiss based on the allegations contained in Mathew’s

complaint. Substantial prejudice is a fact-intensive question that Disney had the

burden to prove. E.g., Conti v. Board of Civil Service Commissioners, 461 P.2d

617 (Cal. 1969); Bono v. Clark, 128 Cal. Rptr. 2d 31, 38 (Ct. App. 2002). It is true

the complaint filed by Mathew alleged that Disney has pursued the Pirates

franchise in multiple ways. It did not allege that Disney suffered substantial

prejudice, however, and it certainly did not allege that Disney would have

abandoned the Pirates franchise or run it at all differently had it known earlier of

Mathew’s intent to rescind the release.

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      It is fundamental that Rule 12(b)(6) requires a court to construe the

allegations of the complaint in the light most favorable to the nonmoving party, in

this case Mathew. See, e.g., Wyler Summit Partnership v. Turner Broadcasting

System, Inc., 135 F.3d 658, 661 (9th Cir. 1998). The district court did not do that,

and neither has the majority in its disposition. The conclusion that Disney was

substantially prejudiced by Mathew’s delay in giving notice of his intent to rescind

the Release was wildly premature.1

      At oral argument, counsel for Disney realistically acknowledged that it was

possible that the series might have gone forward anyway, but he pointed out that

there were other steps Disney might have taken, such as to file a declaratory relief

      1
         The district court may have been influenced by a concern for the threat that
Mathew would seek to recover all of Disney’s substantial profits from the Pirates
franchise and may have presumed that the threat necessarily would have affected
how Disney managed its franchise. If so, this was improper. The Supreme Court
in Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962 (2014), cautioned that a
plaintiff would not be entitled to all, or even most, of the defendant’s profits
because “the District Court, in determining appropriate injunctive relief and
assessing profits, may take account of [his or her] delay in commencing suit,” the
plaintiff would only be able to recover for infringement within the Copyright Act’s
3-year period of limitations, the defendant “may prove and offset against profits
made in that period ‘deductible expenses’ incurred in generating those profits,” and
“the defendant may prove and offset ‘elements of profit attributable to factors other
than the copyrighted work,” thus, the defendant “may retain the return on
investment shown to be attributable to its own enterprise, as distinct from the value
created by the infringed work.” Id. at 1973-78 (citations and quotations omitted).
A court cannot presume substantial prejudice by inferring that Disney would have
behaved a certain way based on a mistaken view of the law.

                                          4
action to resolve Mathew’s claim earlier rather than later. Possibly so, but that is

not something that can be derived from the complaint, nor is it so certain that it can

be found as a matter of law. Moreover, as it seems likely that Disney would have

continued to pursue the Pirates franchise in the meantime rather than run the risk

that it would wither in value, it would limit Disney’s laches defense to the

additional amount that it might have been able to save if it had been able to take

that action. That would still leave open the possibility of a claim by Mathews for

some share in the profits received by Disney in the meantime.

      Despite the majority’s acknowledgment, at 3, that “a finding of substantial

prejudice is generally premature at the 12(b)(6) stage,” the majority nonetheless

tries to justify its affirmance of the dismissal in this case based on Petrella v.

Metro-Goldwyn-Mayer, Inc., 695 F.3d 946 (9th Cir. 2012), overruled on other

grounds by Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S.Ct. 1962 (2014). The

district court in Petrella did not presume substantial prejudice on a motion to

dismiss, however. The court in Petralla found substantial prejudice at the

summary judgment stage, after the parties had an opportunity to develop and

submit evidence on the issue. 694 F.3d at 953-54. That approach was consistent

with the fact-intensive nature of the substantial prejudice inquiry, unlike the

approach taken in this case.

                                            5
      In addition, the majority cites Petrella for the proposition that substantial

prejudice exists whenever a defendant shows that it “invested money to expand its

business or entered into business transactions based on its presumed rights” during

the delay. 695 F.3d at 953. But this fundamentally misunderstands Petrella and

would bring that decision into conflict with our decisions in other cases, including

Internet Specialties West, Inc. v. Milon-Digiorgio Enterprises, Inc., 559 F.3d 985,

991-93 (9th Cir. 2008) (“If this prejudice could consist merely of expenditures in

[the allegedly infringing work], then relief would have to be denied in practically

every case of delay.”). Petrella made clear that the proposition quoted above only

applied in instances of extraordinary delay, in that case of 18 to 19 years, where

less proof of prejudice was required. 695 F.3d at 952-53. The delay in our case

was less than four years. That does not mean that Mathew’s delay should be

disregarded, but it does mean that it cannot be presumed that Disney must have

suffered prejudice so substantial that Mathew’s claim should be dismissed on a

motion to dismiss.

      Danjaq, the other case the majority cites as supporting its position regarding

the finding of substantial prejudice to support the application of a laches defense,

involved an even longer delay by the plaintiff in asserting its claim, a delay of

nearly 40 years. 263 F.3d at 956. Danjaq, moreover, did not involve a dismissal at

                                           6
the stage of a 12(b)(6) motion, either. The court there only concluded that there

was substantial prejudice after a bench trial. Id. at 950.

      Disney may still prove substantial prejudice sufficient to make out the

affirmative defense of laches. If the district court thought that issue was likely to

be dispositive, it could organize the litigation to focus on it, by limiting discovery

to that issue and directing the parties to brief an appropriate motion for summary

judgment. Disposal of Mathew’s claim might be appropriate then. It is not

appropriate now, however.

      The claim presented by plaintiff Royce Mathew strikes me as unlikely to

succeed in the end, for multiple reasons, but that perception does not give us leave

to resolve this case at the stage of motion to dismiss under Federal Rule of Civil

Procedure 12(b)(6) based on a determination that is essentially factual. I would

vacate the district court’s order of dismissal under Rule 12(b)(6) and remand for

further proceedings.




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