FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
LARRY MONTZ; DAENA SMOLLER,
Plaintiffs-Appellants,
No. 08-56954
v.
D.C. No.
PILGRIM FILMS & TELEVISION, INC.; 2:06-cv-07174-
NBC UNIVERSAL, INC.; CRAIG FMC-MAN
PILIGIAN; JASON CONRAD HAWES;
OPINION
UNIVERSAL TELEVISION NETWORKS,
Defendants-Appellees.
Appeal from the United States District Court
for the Central District of California
Florence-Marie Cooper, District Judge, Presiding
Argued and Submitted
May 4, 2010—Pasadena, California
Filed June 3, 2010
Before: Diarmuid F. O’Scannlain and Richard C. Tallman,
Circuit Judges, and Joan Humphrey Lefkow,
District Judge.*
Opinion by Judge O’Scannlain
*The Honorable Joan Humphrey Lefkow, United States District Judge
for the Northern District of Illinois, sitting by designation.
7937
7940 MONTZ v. PILGRIM FILMS & TELEVISION
COUNSEL
Howard B. Miller, of Girardi Keese, Los Angeles, California,
argued the cause for the plaintiffs-appellants. Joseph C.
Gjonola, of Girardi Keese, Los Angeles, California, filed the
briefs. Graham B. LippSmith, of Girardi Keese, Los Angeles,
California, was also on the briefs.
Gail Migdal Title, of Katten Muchin Rosenman LLP, Los
Angeles, California, argued the cause for the defendants-
appellees. Joel R. Weiner, of Katten Muchin Rosenman LLP,
Los Angeles, California, filed a brief. Gail Migdal Title and
Gloria C. Franke, of Katten Muchin Rosenman LLP, Los
Angeles, California, were also on the brief.
OPINION
O’SCANNLAIN, Circuit Judge:
We consider whether federal copyright law preempts state-
law claims alleging the unauthorized use of screenplays, vid-
eos, and other materials in the production of a cable television
series.
I
A
In November 2006, plaintiffs Larry Montz, a parapsy-
chologist, and Daena Smoller, a publicist, filed a complaint in
federal district court. They claimed that in 1981, Montz con-
ceived of the concept for a new reality television program fea-
MONTZ v. PILGRIM FILMS & TELEVISION 7941
turing a team of “paranormal investigators.” As allegedly
envisioned by Montz, each hour-long episode would follow
the team’s members to a different real-world location, where
they would use magnetometers, infrared cameras, and other
devices to investigate (and occasionally debunk) reports of
paranormal activity.
The complaint alleges that between 1996 and 2003, the
plaintiffs presented screenplays, videos, and other materials
relating to their proposed show to representatives of NBC
Universal, Inc., and the Sci-Fi Channel (now the Syfy Chan-
nel), “for the express purpose of offering to partner . . . in the
production, broadcast and distribution of the Concept.” The
representatives were allegedly not interested in the concept
for the show. According to the complaint, however, NBC
Universal subsequently partnered with Craig Piligian and Pil-
grim Films & Television, Inc., to produce a series on the Sci-
Fi Channel based on the plaintiffs’ materials. The show, cal-
led Ghost Hunters, stars Jason Hawes as the leader of a team
of investigators who travel across the country to study para-
normal activity.
The plaintiffs brought various causes of action against NBC
Universal, Pilgrim Films, Piligian, Hawes, and ten unknown
other defendants. The complaint alleges that the defendants
engaged in unauthorized use of the plaintiffs’ materials, in
violation of their exclusive rights under federal copyright law.
In addition, it alleges several state-law claims, two of which
are relevant here: (1) that “by producing and broadcasting”
Ghost Hunters, the defendants breached an “implied agree-
ment not to disclose, divulge or exploit the Plaintiffs’ ideas
and concepts without the express consent of the Plaintiffs, and
to share with the Plaintiffs . . . the profits and credit for their
idea and concepts”; and (2) that the defendants breached the
plaintiffs’ confidence “[b]y taking the Plaintiffs’ novel ideas
and concepts, exploiting those ideas and concepts, and profit-
ing therefrom to the Plaintiffs’ exclusion.”
7942 MONTZ v. PILGRIM FILMS & TELEVISION
B
In April 2007, the defendants moved to dismiss the com-
plaint under Federal Rule of Civil Procedure 12(b)(6) for fail-
ure to state a claim upon which relief can be granted. The
district court granted in part and denied in part the defendants’
motion in July 2007. The court concluded that the complaint
alleged facts sufficient to state a federal copyright claim, but
that federal copyright law preempted the plaintiffs’ state-law
breach-of-implied-contract and breach-of-confidence claims.
The court dismissed the state-law claims with prejudice and
without leave to amend.
In August 2008, the plaintiffs amended their copyright
claim and added Universal Television Networks as a defen-
dant. The parties, however, subsequently stipulated to volun-
tary dismissal of the amended copyright claim with prejudice,
and the district court dismissed the claim accordingly. With
no remaining claims to be adjudicated, the district court
entered final judgment in favor of the defendants.
II
[1] The plaintiffs timely appeal the dismissal of their state-
law breach-of-implied-contract and breach-of-confidence
claims. In their view, the district court erred in ruling their
claims preempted by 17 U.S.C. § 301(a), which provides:
[A]ll legal or equitable rights that are equivalent to
any of the exclusive rights within the general scope
of copyright as specified by section 106 in works of
authorship that are fixed in a tangible medium of
expression and come within the subject matter of
copyright as specified by sections 102 and 103 . . .
are governed exclusively by this title. . . . [N]o per-
son is entitled to any such right or equivalent right
in any such work under the common law or statutes
of any State.
MONTZ v. PILGRIM FILMS & TELEVISION 7943
By its terms, § 301(a) sets forth two conditions for preemp-
tion. First, the state-law claim must assert rights in “works of
authorship that are fixed in a tangible medium of expression
and come within the subject matter of copyright as specified
by [17 U.S.C. §§ 102 and 103].” Second, the rights asserted
under state law must be “equivalent” to the exclusive rights
of copyright owners specified by 17 U.S.C. § 106. A state-law
claim is preempted under § 301(a) only if both conditions are
satisfied. See Laws v. Sony Music Entm’t, Inc., 448 F.3d 1134,
1137-38 (9th Cir. 2006).
A
We begin with the plaintiffs’ breach-of-implied-contract
claim. The district court ruled that the claim—which asserts
rights in screenplays, videos, and other tangible media—
comes within the “subject matter of copyright” and thus satis-
fies the first condition for preemption. The plaintiffs do not
challenge this ruling on appeal. Our inquiry is therefore lim-
ited to whether the claim satisfies the second condition—that
is, whether the rights asserted under the claim are “equiva-
lent” to the exclusive rights of copyright owners under § 106.
[2] Section 106 confers upon copyright owners the exclu-
sive rights to reproduce, to distribute, and to display original
works of authorship, and to prepare works derived from the
originals. 17 U.S.C. § 106. Section 106 also gives copyright
owners the exclusive right to authorize such reproduction, dis-
tribution, display, and preparation. Id. “To survive preemp-
tion, the state cause of action must protect rights which are
qualitatively different from the copyright rights. The state
claim must have an extra element which changes the nature
of the action.” Laws, 448 F.3d at 1143 (internal quotation
marks omitted).
[3] The plaintiffs’ breach-of-implied-contract claim con-
sists of the following allegations: that “[t]he Plaintiffs pres-
ented their ideas for the ‘Ghost Hunter’ Concept to the
7944 MONTZ v. PILGRIM FILMS & TELEVISION
Defendants[ ] in confidence . . . for the express purpose of
offering to partner with the Defendants in the production,
broadcast and distribution of the Concept”; that “by accepting
the Plaintiffs’ disclosure of its concept,” the defendants
agreed that they “would not disclose, divulge or exploit the
Plaintiffs’ ideas and concepts without compensation and with-
out obtaining the Plaintiffs’ consent”; and that “by producing
and broadcasting the Concept,” “[t]he Defendants breached
their implied agreement not to disclose, divulge or exploit the
Plaintiffs’ ideas and concepts without the express consent of
the Plaintiffs, and to share with the Plaintiffs . . . the profits
and credit for their idea and concepts.” The gravamen of the
claim is that the defendants used the plaintiffs’ work, without
authorization, to create (and then profit from) a new television
program. The rights asserted by the plaintiffs under the
implied contract are thus equivalent to the rights of copyright
owners under § 106—namely, the exclusive rights to use and
to authorize use of their work.
The plaintiffs counter that Grosso v. Miramax Film Corp.,
383 F.3d 965 (9th Cir. 2004), compels a different conclusion.
Grosso involved a particular type of breach-of-implied-
contract claim, the elements of which the California Supreme
Court elucidated in Desny v. Wilder, 299 P.2d 257 (Cal.
1956). To state a Desny claim, the plaintiff must plead that he
“prepared the work [at issue], disclosed the work to the
offeree for sale, and did so under circumstances from which
it could be concluded that the offeree voluntarily accepted the
disclosure knowing the conditions on which it was tendered
and the reasonable value of the work.” Grosso, 383 F.3d at
967 (citing Faris v. Enberg, 158 Cal. Rptr. 704, 709 (Ct. App.
1979)). “[M]irror[ing] the requirements of Desny,” the com-
plaint in Grosso alleged that the plaintiff had given the defen-
dants an idea for a movie “with the understanding and
expectation . . . that [he] would be reasonably compensated
for its use by Defendants.” Id. (internal quotation marks omit-
ted). We concluded that the defendants’ “implied promise to
pay” for use of the plaintiff’s idea constituted “an ‘extra ele-
MONTZ v. PILGRIM FILMS & TELEVISION 7945
ment’ for preemption purposes.” Id. at 968. Accordingly, we
held that the plaintiff’s Desny claim survived preemption
under § 301. Id.
Contrary to the plaintiffs’ assertion, however, the present
case is distinguishable from Grosso. There, the plaintiff alleg-
edly disclosed his idea to the defendants for the express pur-
pose of offering it for sale; the defendants allegedly accepted
the offer and, in return, made an implied promise to pay for
use of the idea. Here, by contrast, the plaintiffs allegedly dis-
closed their work to the defendants “for the express purpose
of offering to partner . . . in the production, broadcast and dis-
tribution of the Concept”; the defendants allegedly rejected
the offer but, in return, made an implied promise “not to dis-
close, divulge or exploit the Plaintiffs’ ideas and concepts
without the express consent of the Plaintiffs.” (Emphases
added.) The nature of the implied contracts in the two cases
is thus fundamentally different. Whereas the breach of the
alleged agreement in Grosso violated the plaintiff’s right to
payment on a sale, the breach of the alleged agreement in this
case violated the plaintiffs’ exclusive rights to use and to
authorize use of their work—rights equivalent to those of
copyright owners under § 106.
The plaintiffs nevertheless insist that their breach-of-
implied-contract claim contains an “extra element” that distin-
guishes it from a copyright claim. They contend that “by pro-
ducing and broadcasting” Ghost Hunters, the defendants
violated not only their exclusive rights to use and to authorize
use of their work, but also their right to receive a share of “the
profits and credit for their idea and concepts.” According to
them, the right to receive a share of the profits and credit is
one beyond the scope of § 106.
[4] The mere mention of such a right, however, is not
enough to “qualitatively distinguish” the plaintiffs’ breach-of-
implied-contract claim from a copyright claim. Laws, 448
F.3d at 1144. The plaintiffs expected to receive a share of the
7946 MONTZ v. PILGRIM FILMS & TELEVISION
profits and credit for use of their work, but only because they
expected, as any copyright owner would, that their work
would not be used without their permission. The text of the
complaint confirms as much:
The Plaintiffs presented their ideas for the “Ghost
Hunter” Concept to the Defendants[ ] in confidence,
pursuant to the custom and practice of the entertain-
ment industry, for the express purpose of offering to
partner with the Defendants in the production, broad-
cast and distribution of the Concept. Accordingly,
the Plaintiffs justifiably expected to receive a share
of any profits and credit that might be derived from
the exploitation of [their] ideas and concepts for the
Concept.
(Emphasis added.) As this paragraph of the complaint makes
clear, the plaintiffs’ expectation of profits and credit was
premised on the fact that they would retain control over their
work, whether in partnership with the defendants or not. The
plaintiffs’ right to receive a share of the profits and credit is
thus merely derivative of the rights fundamentally at issue:
the plaintiffs’ exclusive rights to use and to authorize use of
their work. The plaintiffs’ claim is “part and parcel of a copy-
right claim,” and the presence of a right to receive a share of
the profits and credit does not “transform the nature of the
action.” Laws, 448 F.3d at 1144. We therefore hold that the
plaintiffs’ breach-of-implied-contract claim is preempted by
federal copyright law, and that the district court properly dis-
missed the claim.
B
[5] As to the breach-of-confidence claim, the plaintiffs do
not challenge the district court’s conclusion that it satisfies the
first condition for preemption. The only question before us is
whether the rights asserted under the claim are “equivalent”
MONTZ v. PILGRIM FILMS & TELEVISION 7947
to the exclusive rights of copyright owners under § 106. We
are satisfied that they are.
[6] The complaint contends that “the Plaintiffs’ disclosure
of their ideas and concepts [was] strictly confidential,” and
that “[b]y taking the Plaintiffs’ novel ideas and concepts,
exploiting those ideas and concepts, and profiting therefrom
to the Plaintiffs’ exclusion, the Defendants breached their
confidential relationship with the Plaintiffs.” Such claim sim-
ply echoes the allegations of the breach-of-implied-contract
claim, which we have already deemed preempted. Indeed, the
alleged breach of confidence stems from an alleged violation
of the very rights contained in § 106—the exclusive rights of
copyright owners to use and to authorize use of their work.
Given that the plaintiffs’ breach-of-confidence claim is not
qualitatively different from a copyright claim, we conclude
that it was also properly dismissed.
III
Finally, the plaintiffs argue that even if the district court
properly dismissed their state-law claims, it should not have
denied leave to amend them. “We review strictly a district
court’s exercise of discretion denying leave to amend.”
Albrecht v. Lund, 845 F.2d 193, 195 (9th Cir. 1988).
[7] The proceedings in the district court were governed by
former Federal Rule of Civil Procedure 15(a), which provided
that “[a] party may amend the party’s pleading once as a mat-
ter of course at any time before a responsive pleading is
served.” We have previously said that “[a] motion to dismiss
is not a ‘responsive pleading’ within the meaning of the
Rule.” Breier v. N. Cal. Bowling Proprietors’ Ass’n, 316 F.2d
787, 789 (9th Cir. 1963). Nevertheless, we have held that in
granting a motion to dismiss before a responsive pleading is
served, a district court may cut off a party’s right to amend
as a matter of course if “the allegation of other facts consis-
tent with the challenged pleading could not possibly cure the
7948 MONTZ v. PILGRIM FILMS & TELEVISION
deficiency.” Albrecht, 845 F.2d at 195 (internal quotation
marks omitted).1
[8] In this case, the district court dismissed the plaintiffs’
state-law claims without leave to amend before a responsive
pleading was served. Although the district court did not make
written findings in support of its denial of leave to amend, no
such findings were necessary because the court’s decision
makes clear that no allegation of other facts consistent with
the complaint could possibly cure the deficiency. See Miller
v. Yokohama Tire Corp., 358 F.3d 616, 622-23 (9th Cir.
2004). As the district court correctly recognized, the com-
plaint is deficient because it alleges state-law claims that are
preempted by federal copyright law. This deficiency can plau-
sibly be cured only by adding an “extra element” to each
claim that “transform[s] the nature of the action.” Laws, 448
F.3d at 1144. The plaintiffs cannot effect such a transforma-
tion, however, without alleging facts inconsistent with the
challenged complaint. To state a viable Desny claim, for
example, the plaintiffs would have to allege that they offered
their work for sale. See Grosso, 383 F.3d at 967. But such an
allegation would be contrary to the challenged complaint,
which states that they made an offer only of partnership in the
“production, broadcast and distribution of the Concept.” We
are therefore satisfied that the district court did not abuse its
discretion by denying the plaintiffs leave to amend.
1
Amendments to Rule 15(a) took effect on December 1, 2009, and
apply to pending proceedings “insofar as just and practicable.” Order,
2009 U.S. Order 17 (Mar. 26, 2009). Rule 15(a), as amended, provides
that a party’s right to amend as a matter of course terminates “21 days
after service of a responsive pleading or 21 days after service of a motion
under Rule 12(b), (e), or (f), whichever is earlier.” Fed. R. Civ. P.
15(a)(1)(B) (2010). Thus, under the amended rule, the plaintiffs’ right to
amend as a matter of course terminated in May 2007, before the district
court’s ruling on the defendants’ Rule 12(b)(6) motion. It matters not
which version of the rule we apply here, however, because the question
under both versions is ultimately the same: whether the district court
abused its discretion by denying leave to amend.
MONTZ v. PILGRIM FILMS & TELEVISION 7949
IV
For the foregoing reasons, the judgment of the district court
is
AFFIRMED.