Michael Moi v. Chihuly Studio, Inc.

NOT FOR PUBLICATION FILED
UNITED STATES COURT OF APPEALS MAR 1 2021
MOLLY C. DWYER, CLERK
U.S. COURT OF APPEALS
FOR THE NINTH CIRCUIT
MICHAEL MOI, an individual, No. 19-35852
Plaintiff-Appellant, D.C. No. 2:17-cv-00853-RSL
v.
MEMORANDUM*
CHIHULY STUDIO, INC., a Washington
corporation; et al.,
Defendants-Appellees.
Appeal from the United States District Court
for the Western District of Washington
Robert S. Lasnik, District Judge, Presiding
Argued and Submitted February 10, 2021
San Francisco, California
Before: HURWITZ and BRESS, Circuit Judges, and CORKER,** District Judge.
Michael Moi appeals a summary judgment in favor of Chihuly Studio, Inc.,
Dale Chihuly (“Chihuly”), and Leslie Chihuly (collectively, “the Chihuly
Defendants”) on his claims under the Copyright Act, 17 U.S.C. § 101, et seq., the
*
This disposition is not appropriate for publication and is not precedent
except as provided by Ninth Circuit Rule 36-3.
**
The Honorable Clifton L. Corker, United States District Judge for the
Eastern District of Tennessee, sitting by designation.
Visual Artists Rights Act of 1990 (“VARA”), 17 U.S.C. § 106A, and Washington
common law. Moi also challenges a protective order and the district court’s award
of attorney’s fees under the Copyright Act, 17 U.S.C. § 505. We have jurisdiction
under 28 U.S.C. § 1291 and review de novo a grant of summary judgment. Feldman
v. Allstate Ins. Co., 322 F.3d 660, 665 (9th Cir. 2003). We review a district court’s
grant of a protective order and award of attorney’s fees for abuse of discretion.
Beckman Indus., Inc. v. Int’l Ins. Co., 966 F.2d 470, 472 (9th Cir. 1992); Shame On
You Prods., Inc. v. Banks, 893 F.3d 661, 665 (9th Cir. 2018). We affirm.
I.
The district court did not err in granting summary judgment on Moi’s claim
under the Copyright Act because no genuine issues of material fact exist as to
whether Moi is a co-author of a “joint work” within the meaning of 17 U.S.C. § 101.
For purposes of the Copyright Act, a “joint work” requires each of the following
elements: “(1) a copyrightable work, (2) two or more ‘authors,’ and (3) the authors
must intend their contributions to be merged into inseparable or interdependent parts
of a unitary whole.” Aalmuhammed v. Lee, 202 F.3d 1227, 1231 (9th Cir. 2000).
Moi’s failure to identify any particular copyrightable works to which he contributed
strongly undermines his claim of co-authorship. See Richlin v. Metro-Goldwyn-
Mayer Pictures, Inc., 531 F.3d 962, 968 (9th Cir. 2008). Even if Moi could identify
such contributions, he presented no evidence to establish that he qualifies as a co-
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author. See Aalmuhammed, 202 F.3d at 1232 (holding that even if an individual
substantially contributes to a work, they still must be an “author” within the meaning
of 17 U.S.C. § 101 to obtain co-ownership rights).
The following factors are considered in determining whether two or more
individuals qualify as co-authors: (1) control, (2) objective manifestations of shared
intent, and (3) audience appeal. Id. at 1234. Moi failed to meet two out of the three
Aalmuhammed factors. As for control, Chihuly controlled everything from the
artistic design to the decision of whether the finished paintings would be signed,
marketed, and sold or merely discarded. Moi has, at most, established that “subject
to [Chihuly’s] authority to accept them, he made very valuable contributions to the
[paintings]” which is “not enough for co-authorship of a joint work.” Id. at 1235.
There is also no evidence that Chihuly and Moi objectively manifested a
shared intent to be co-authors. In fact, Moi acknowledges that Chihuly represented
to the public that he was the sole creator. Moi asserts that Chihuly promised to take
care of him, which does not rise to the level of expressing intent to recognize Moi as
a co-author. Even viewing the facts in the light most favorable to Moi, his lack of
control coupled with Chihuly’s express intent to remain a sole author preclude a
finding of co-authorship. Therefore, the district court properly granted summary
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judgment on Moi’s Copyright Act claim.1
II.
The district court did not err in granting summary judgment on Moi’s common
law promissory estoppel claim because Moi failed to establish the existence of a
legally enforceable promise. To warrant estoppel under Washington law, a promise
must be “clear and definite.” Wash. Educ. Ass’n v. Wash. Dep’t of Ret. Sys., 332
P.3d 428, 435 (Wash. 2014). The only agreement alleged here is a promise by
Chihuly to “take care of” Moi in the future. Moi concedes that he and Chihuly never
discussed the amount or the terms of compensation. A statement of future intent to
“take care of” someone, where no formal commitment is made and the terms are not
discussed, does not constitute a legally enforceable promise. See Havens v. C & D
Plastics, Inc., 876 P.2d 435, 442–44 (Wash. 1994) (en banc); Elliott Bay Seafoods,
Inc. v. Port of Seattle, 98 P.3d 491, 495 (Wash. Ct. App. 2004). Therefore, the district
court properly granted summary judgment on Moi’s promissory estoppel claim.
III.
The district court did not abuse its discretion in entering a protective order
precluding disclosure of confidential settlement agreements. It is well-established
that the scope of discovery is within the discretion of the district court. United States
1
Moi’s claims under VARA, 17 U.S.C. § 106A, are derivative of his
Copyright Act claims. Therefore, we also affirm the dismissal of those claims.
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v. Domina, 784 F.2d 1361, 1372 (9th Cir. 1986). This includes the district court’s
ability “to decide when a protective order is appropriate and what degree of
protection is required.” Seattle Times Co. v. Rhinehart, 467 U.S. 20, 36 (1984). Rule
26 authorizes the district court to “forbid[] the disclosure or discovery” of matters or
“limit[] the scope of disclosure or discovery to certain matters….” Fed. R. Civ. P.
26(c)(1)(A) & (D). Additionally, Rule 26 expressly limits discovery to “any
nonprivileged matter that is relevant to any party’s claim or defense and proportional
to the needs of the case….” Fed. R. Civ. P. 26(b)(1) (emphasis added). However,
“[i]nformation…need not be admissible in evidence to be discoverable.” Id.The district court found the agreements to be irrelevant to any party’s claim
or defense. Moi argues on appeal that the settlement agreements are relevant to
explore the bias or prejudice of certain witnesses. However, because Moi failed to
raise this argument before the district court, we decline to consider it. See Smith v.
Marsh, 194 F.3d 1045, 1052 (9th Cir. 1999) (“As a general rule, we will not consider
arguments that are raised for the first time on appeal.”). We therefore decline to
disturb the protective order. Regardless, Moi has not shown error in the district
court’s relevancy determination.
IV.
The district court did not abuse its discretion in awarding $1,646,659.68 in
attorney’s fees to the Chihuly Defendants. The Copyright Act gives district courts
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discretion to award reasonable attorney's fees and costs to the prevailing party. 17
U.S.C. § 505. District courts consider the following factors: “(1) the degree of
success obtained; (2) frivolousness; (3) motivation; (4) the objective
unreasonableness of the losing party's factual and legal arguments; and (5) the need,
in particular circumstances, to advance considerations of compensation and
deterrence.” Love v. Assoc’d Newspapers, Ltd., 611 F.3d 601, 614 (9th Cir. 2010).
These factors “are not exclusive and need not all be met.” Fantasy, Inc. v. Fogerty,
94 F.3d 553, 558 (9th Cir. 1996).
The district court properly considered the aforementioned factors and found
that they weighed strongly in favor of an award of fees. Specifically, it considered
Chihuly’s complete success on the merits, the “paucity of supporting evidence” for
Moi’s claims, Moi’s bad faith in the conduct of litigation, and the need for deterrence
of baseless copyright claims. The court also considered the parties’ respective
financial positions. Although the award is substantial, it was not “based on an
inaccurate view of the law or a clearly erroneous finding of fact.” Schwarz v.
Secretary of Health & Human Serv., 73 F.3d 895, 900 (9th Cir. 1995). And, because
Moi failed to challenge the reasonableness of either the hourly rates or the hours
billed before the district court, he has again waived any such argument on appeal.
See Smith, 194 F.3d at 1052.
AFFIRMED.
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