Jules Jordan Video, Inc. v. 144942 Canada Inc.

FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT

JULES JORDAN VIDEO, INC., a 
California corporation; ASHLEY
GASPER, an individual,
Plaintiffs-Appellees,
v.
144942 CANADA INC., a Canadian
corporation d/b/a KAYTEL VIDEO
DISTRIBUTION; ALAIN ELMALEH, an
individual; LEISURE TIME VIDEO No. 08-55075
CANADA, INC., a Canadian
corporation,  D.C. No.
Defendants-Appellants, CV-05-06771-SJO
and
JACKY’S ONE STOP DISTRIBUTION,
INC., a Canadian corporation;
JACKY ELKESLASSY, an individual;
SYLHET DISTRIBUTION, INC., a
Canadian corporation; GERALD
OUZZAN, an individual,
Defendants.


11705
11706 JORDAN VIDEO v. 144942 CANADA

JULES JORDAN VIDEO, INC., a 
California corporation; ASHLEY
GASPER, an individual,
Plaintiffs-Appellants,
v.
144942 CANADA INC., a Canadian
corporation d/b/a KAYTEL VIDEO
DISTRIBUTION; ALAIN ELMALEH, an
individual; LEISURE TIME VIDEO No. 08-55126
CANADA, INC., a Canadian
corporation,  D.C. No.
CV-05-06771-SJO
Defendants-Appellees, OPINION
and
JACKY’S ONE STOP DISTRIBUTION,
INC., a Canadian corporation;
JACKY ELKESLASSY, an individual;
SYLHET DISTRIBUTION, INC., a
Canadian corporation; GERALD
OUZZAN, an individual,
Defendants.

Appeal from the United States District Court
for the Central District of California
S. James Otero, District Judge, Presiding

Argued and Submitted
March 2, 2010—Pasadena, California

Filed August 16, 2010
 JORDAN VIDEO v. 144942 CANADA 11707
Before: Alex Kozinski, Chief Judge, William A. Fletcher,
Circuit Judge, and Robert W. Gettleman,*
Senior District Judge.

Opinion by Judge Gettleman

*The Honorable Robert W. Gettleman, United States District Judge for
the Northern District of Illinois, sitting by designation.
11710 JORDAN VIDEO v. 144942 CANADA

COUNSEL

Michael M. Plotkin (argued), Law Offices of Michael M.
Plotkin, Los Angeles, California, Charles M. Coate, Costa,
Abrams & Coate, LLP, Santa Monica, California, for the
appellants.

Jens Koepke (argued), Greines, Martin, Stein & Richland
LLP, Los Angeles, California, Mark J. Poster, Sheila A.
Wirkus, Greines, Martin, Stein & Richland, LLP, Los Ange-
les, California, for the appellees.

OPINION

GETTLEMAN, Senior District Judge:

Ashley Gasper is an adult movie actor who performs under
the stage name Jules Jordan, and is the president and sole
 JORDAN VIDEO v. 144942 CANADA 11711
shareholder of Jules Jordan Video (“JJV”), the creator of the
videos in which Gasper appears. He and his company sued
defendants 144942 Canada, Inc., d/b/a Kaytel Video Distribu-
tion (“Kaytel”), Leisure Time Video Canada, Inc. (“Leisure
Time”), Alain Elmaleh, the principal shareholder of each of
the corporate defendants (collectively the “Kaytel defen-
dants”), Jacky’s One Stop and the other defendants named in
this consolidated appeal. Gasper alleged that the Kaytel
defendants had copied and sold thirteen copyrighted adult
DVDs owned by JJV or Gasper and featuring Gasper’s per-
formances (the “JJV action”). The complaint alleged claims
for copyright infringement, contributory copyright infringe-
ment, violation of unfair business practice, unfair competition
under California law, false and misleading advertising, and
violation of Gasper’s right of publicity. The claims for unfair
business practices and false advertising were dismissed prior
to trial, leaving only the claims for copyright infringement
based on the replication and distribution of the thirteen DVDs,
and the claim for violation of Gasper’s right of publicity
under California law.

After a lengthy and contentious trial, the jury returned a
verdict for plaintiffs on both issues.1 After the verdict the
court granted the Kaytel defendants’ motion for judgment as
a matter of law (“JMOL”) in part, concluding that neither
Gasper nor JJV had standing to assert the copyright claims,
and denied plaintiffs’ motion for JMOL. The court rejected
the Kaytel defendants’ claim that Gasper’s right of publicity
claim was preempted by copyright law. Both parties have
appealed. We disagree with the district court on both issues,
concluding that Gasper’s right of publicity claim is preempted
by the Copyright Act, but that Gasper and JJV had standing
to assert the copyright claims in question.
1
The JSI action also involved claims for trademark violations. After trial
JSI settled with the Kaytel defendants.
11712 JORDAN VIDEO v. 144942 CANADA
FACTS AND PROCEDURAL HISTORY

Both Gasper and Stagliano are adult film performers of
some stature. Stagliano’s company, JSI, distributed the works
of many producers including Stagliano and Gasper, under the
brand names Evil Angel and Evil Empire. Gasper started
making adult films in 1994. He produces, directs and per-
forms in his films under the stage name Jules Jordan. He also
writes the scripts and films the scenes. JJV, which he formed
in 2001, is basically a one-man shop with Gasper as the presi-
dent and sole shareholder. During the period in question, he
received from JJV a $6,000 monthly salary and year-end
bonuses based on company income.

In 2001 Gasper agreed with Stagliano that JSI would dis-
tribute the Jules Jordan films in the United States, but Gasper
retained ownership of the copyright. JSI prepared Gasper’s
copyright registration paperwork. In 2006 Gasper and JJV
ended their relationship with JSI and began to distribute their
own movies.

Elmaleh is the sole or majority shareholder in all of the
Kaytel companies, and formed 2918919 Canada, Inc. as a
Canadian holding company that owns both Kaytel Video Dis-
tribution and Leisure Time, major adult entertainment distrib-
utors in the Canadian market. Elmaleh also owned a number
of retail adult entertainment stores in Canada. He controlled
all of the Kaytel defendant entities, and at least some of the
employees were shared among the companies.

In spring 2005, JSI began receiving a higher than normal
rate of return of Jules Jordan videos. Upon review of the
returned merchandise, Gasper learned that the returns were
“counterfeit” copies of his DVDs. The counterfeit works were
inferior and were replicated and compressed to fit on a smal-
ler DVD, reducing the quality of the video.

Gasper and JSI discovered that Kaytel used Media Master-
ing Services to produce unauthorized masters of a number of
 JORDAN VIDEO v. 144942 CANADA 11713
JSI titles, including the 13 JJV titles involved in the instant
case. Using replication broker Gerald Ouzzan and his com-
pany Sylnet, Kaytel contracted with Diadem Digital to repli-
cate thousands of copies of the counterfeit DVDs. Elmaleh,
individually and on behalf of Kaytel, signed documents repre-
senting that they owned the rights to the DVDs. One of Kay-
tel’s employees, Jacky Elkeslassy, formed a Canadian
company called Jacky’s One Stop, that sold the copied DVDs
to distributors, primarily Direct Distributors in New York
(“Direct”). Although the sales were ostensibly between Direct
and Jacky’s One Stop, Direct dealt exclusively with Elmaleh
and sent payments to Kaytel. Direct distributed the counterfeit
DVDs throughout the United States.

Gasper and JJV sued. On the same day that Gasper filed
suit, a companion case, John Stagliano, Inc. v. Alain Elmaleh,
et al. (the “JSI action”), was filed, also alleging that the Kay-
tel defendants had replicated and distributed a number of
Stagliano’s copyrighted DVDs without license or authority.

The two cases, along with a third case brought by JJV
against Canadian Multimedia Entertainment, Inc. (the “CME
action”), were all originally assigned to Judge Matthew
Byrne, whose untimely death resulted in reassignment to
Judge Dickran Tevrizian. Judge Tevrizian consolidated the
cases for discovery but retired from the bench prior to the
trial. The cases were then reassigned to Judge S. James Otero,
who consolidated the three cases for all purposes including
trial. Prior to the trial, the plaintiffs settled with and dismissed
their claims against Elmaleh, Gerald Ouzzan and Sylnet Dis-
tributors, Inc. Just before trial the CME action settled, leaving
only the JJV and JSI actions against the Kaytel defendants to
be tried. The plaintiffs in both cases settled with Media Mas-
tering Services, Diaden, Sylnet, Elkeslassy and Jacky and
Direct in exchange for monthly payments and promises to
provide documentation and testimony. JSI settled with Kaytel
after trial.
11714 JORDAN VIDEO v. 144942 CANADA
The JJV action went to trial on the two remaining issues,
copyright infringement and violation of Gasper’s right of pub-
licity under California law. The jury found that all three
defendants infringed Gasper’s/JJV’s copyrights, awarding
$30,000 in statutory damages for each of the thirteen DVDs
against Kaytel, $30,000 for each DVD against Leisure Time
and $140,000 for each DVD against Elmaleh. The jury also
found that defendants violated Gasper’s right of publicity and
awarded Gasper varying amounts in damages, lost profits and
punitive damages against each defendant totaling just under
$2.85 million, including $2.5 million in punitive damages.

Prior to trial, the Kaytel defendants had moved in limine to
exclude evidence in support of Gasper and JJV’s copyright
claims, arguing that both Gasper and JJV lacked standing to
assert any copyright infringement claim because the com-
plaint alleged that Stagliano’s company, EA Productions, had
the “exclusive rights to manufacture and distribute Plaintiffs’
copyrighted products . . . .” The district court denied the
motion because the evidence could have been admissible if
relevant to claims brought by other plaintiffs, but dismissed
sua sponte JJV and Gasper’s copyright infringement claims.

During a recess on the first day of trial the court granted
plaintiffs’ motion to reconsider and reinstated the copyright
claims, concluding that JJV and Gasper could be “beneficial
owners under their license agreement with JSI,” and if so,
would have standing under 17 U.S.C. § 501(b). The court’s
order specifically noted that defendants “may revisit the issue
should Plaintiffs fail to perfect standing prior the close of
Plaintiffs’ cases in chief.” Defendants attempted to raise the
issue at the close of plaintiffs’ case, but the court did not want
to delay the trial and instructed defendants to file written
motions that would be entertained at the appropriate time.

When the case was first reassigned to Judge Otero, he
informed the parties both orally and in written orders that no
dispositive motions were to be filed. Prior to trial defendants
 JORDAN VIDEO v. 144942 CANADA 11715
moved in limine to preclude plaintiffs from introducing evi-
dence in support of their common law claims and sought dis-
missal of those claims as preempted by the Copyright Act, 17
U.S.C. § 301. The court refused to exclude the evidence
because “that evidence may be relevant to the federal law
claims which supposedly pre-empt the common law claims.”
The court refused to consider the request to dismiss the com-
mon law claims because it had “already told the parties that
it will not consider any further dispositive motions.”

At the close of trial both parties moved for judgment as a
matter of law pursuant to Fed. R. Civ. P. 50. Plaintiffs sought
JMOL on the state law claims and the copyright infringement
claims. Defendants’ motion, on the other hand, sought JMOL
on the copyright claim only, arguing that plaintiffs lacked
standing. The court granted defendants’ motion, concluding
that because Gasper was employed by JJV the motion picture
were works for hire under 17 U.S.C. § 101 and that JJV was
the author, leaving Gasper without standing. The court also
concluded that because the copyright registration in Gasper’s
name was invalid, JJV had no standing.

The court denied as moot plaintiffs’ motion for JMOL in
light of the subsequent jury verdict in favor of plaintiffs and
the decision on defendants’ motions. The court noted, how-
ever, that in response to plaintiffs’ motion, defendants had
argued that plaintiffs’ California state law right of publicity
claim was preempted by the Federal copyright claim. After
indicating that defendants should have raised this issue in
their own motion, the court analyzed the issue for the “sake
of procedural clarity,” concluding that the claim was not pre-
empted and indicating that “[i]f Defendants moved to make
this argument, such a Motion would be DENIED.”

After entry of judgment, defendants moved pursuant to
Fed. R. Civ. P. 59 for a new trial, arguing again that Gasper’s
state law claim was preempted by the Federal Copyright Act.
The court denied that motion based on its earlier ruling.
11716 JORDAN VIDEO v. 144942 CANADA
ANALYSIS

I.

Defendants appeal from the district court’s decision that
Gasper’s right of publicity claim under California Civil Code
§ 3344 was not preempted by the Copyright Act. We review
de novo whether a federal law preempts a state law, as well
as the district court’s interpretation of state law. Laws v. Sony
Music Entm’t, Inc., 448 F.3d 1134, 1137 (9th Cir. 2006).

[1] Congress enacted the Copyright Act, 17 U.S.C. § 101
et seq., to define and protect the rights of copyright holders.
The Act provides that “the owner of copyright . . . has the
exclusive rights to do and to authorize” others to display, per-
form, reproduce or distribute copies of the work and to pre-
pare derivative works. 17 U.S.C. § 106. A copyright gives the
owner the right to control the work.

[2] Section 301 of the Act provides for exclusive jurisdic-
tion over rights that are equivalent to any of the exclusive
rights within the general scope of copyright as specified in the
Act. “The intention of Section 301 is to preempt and abolish
any rights under the common law or statutes of a State that are
equivalent to copyright and that extend to works within the
scope of Federal copyright law.” H.R. Rep. No. 94-1476 at
130. In Laws, we stated that:

We have adopted a two-part test to determine
whether a state law claim is preempted by the Act.
We must first determine whether the ‘subject matter’
of the state law claim falls within the subject matter
of copyright as described in 17 U.S.C. §§ 102 and
103. Second, assuming that it does, we must deter-
mine whether the rights asserted under state law are
equivalent to the rights contained in 17 U.S.C. § 106,
which articulates the exclusive rights of copyright
holders.
 JORDAN VIDEO v. 144942 CANADA 11717
448 F.3d at 1137-1138.

[3] This court held that a claim under the California right
of publicity statute, Cal. Civil Code § 3344, based on an alleg-
edly unauthorized publication of a musical recording was pre-
empted by the Copyright Act. The court noted that Section
102 of the Act extends copyright protection to “original works
or authorship fixed in any tangible medium of expression
from which they can be reproduced,” and that a work is
“fixed” in a tangible medium “when its embodiment in a copy
or phono record, by or under the authority of the author, is
sufficiently permanent or stable to permit it to be perceived,
reproduced, or otherwise communicated for a period of more
than transitory duration.” Id. at 1139 (quoting 17 U.S.C.
§ 101).

Laws was a recording artist who had entered into a record-
ing agreement with Elektra Records to produce master record-
ings of her vocal performances for Elektra. The agreement
gave Elektra “sole and exclusive right to copyright such mas-
ter recordings.” Id. at 1136. Elektra granted Sony a non-
exclusive license to use a sample of one of Laws recordings
in a Sony recording by Jennifer Lopez and LL Cool J. Laws
sued Sony claiming that the use of her voice on the Sony
recording was a misappropriation of her right of publicity
under California Civil Code § 3344(a). We applied the two
part test and found that Laws’ master recordings were plainly
original works of authorship fixed in a tangible medium of
expression capable of reproduction. Thus, the master record-
ings were within the “subject matter” of copyright. Id. at
1139.

Despite that obvious conclusion, Laws argued that the sub-
ject matter of a copyright claim and a right of publicity claim
are substantively different because the copyright claim pro-
tects ownership rights to a work of art, while a right of public-
ity claim concerns the right to protect one’s persona and
likeness. Thus, Laws contended (unsuccessfully) that her right
11718 JORDAN VIDEO v. 144942 CANADA
of publicity claim was based on an “unauthorized duplication
of her vocal performance,” not the duplication of the master
recording itself. Id. at 1141.

[4] Gasper makes the same contention in the instant case,
arguing that the Kaytel defendants misappropriated his name
and “persona,” in addition to his “dramatic performance.” We
reject this argument for the same reason we rejected it in
Laws.

Although California law recognizes an ascertainable
interest in the publicity associated with one’s voice,
we think it is clear that federal copyright law pre-
empts a claim alleging misappropriation of one’s
voice when the entirety of the allegedly misappropri-
ated vocal performance is contained within a copy-
righted medium.

Id. at 1141.

Gasper’s claim that the Kaytel defendants misappropriated
his name and persona is based entirely on the misappropria-
tion of the DVDs and Gasper’s performance therein. Indeed,
the complaint alleged that “Defendants have wilfully and sys-
tematically infringed Plaintiffs’ copyrights and rights or pub-
licity (directly and by assignment) by the repeated
unauthorized reproduction, counterfeiting, and sale of such
counterfeit copies of Plaintiffs’ copyrighted works to third
parties.” In the amended Pre-Trial Conference Order Gasper
again listed the evidence in support of his right of publicity
claim as “Mr. Gasper’s name, likeness, photograph and voice
appear in the counterfeit Gasper Films without his authoriza-
tion.” Thus, throughout the litigation Gasper has claimed that
the factual basis of his right of publicity claim was the unau-
thorized reproduction of his performance on the DVDs.

On appeal he now argues, apparently for the first time, that
it is the use of his name and likeness on the covers of the
 JORDAN VIDEO v. 144942 CANADA 11719
counterfeit DVDs that violated his right of publicity. But
Gasper’s face appears nowhere on any of the DVD covers,
and whether his “persona” appears in the form of some other
part of his anatomy is unknown. What is known from the
exhibits introduced at trial is that the pictures on the covers
of the DVDs are “still shots” of the copyrighted video perfor-
mance. Thus, Gasper’s argument that his right of publicity
was violated by defendants’ reproduction of the covers is mis-
guided.2

In the district court, the Kaytel defendants relied on Fleet
v. CBS, Inc., 50 Cal. App. 4th 1911 (1996), a case we cited
with approval in Laws. In Fleet the court rejected claims very
similar to those Gasper asserts in the instant case:

In this case we are asked to decide a very narrow
issue: whether an actor may bring an action for mis-
appropriation of his or her name, image, likeness or
identity under Section 3344 of the Civil Code when
the only alleged exploitation occurred through the
distribution of the actor’s performance in a motion
picture. The trial court concluded that to the extent
California law would permit such a claim, it was pre-
empted by federal copyright law. We agree with the
trial court and affirm.

Id. at 1913

In rejecting the Kaytel defendants’ position, the district
court relied on KNB Enters. v. Matthews, 78 Cal. App. 4th
362 (2000), which read Fleet narrowly and held that the right
of publicity is preempted by the Copyright Act only when the
2
Even if we were to accept Gasper’s argument, the covers of the DVDs
are likely component parts of the copyrighted DVD. See 1-2 Nimmer on
Copyright § 2.04; Triangle Publ’ns, Inc. v. Knight-Ridder Newspapers,
Inc., 445 F. Supp. 875 (S.D. Fla. 1978) (cover considered copyrightable
component part and copyright of underlying work extends to cover).
11720 JORDAN VIDEO v. 144942 CANADA
distribution is made by the exclusive copyright holder. The
KNB court stated:

Accordingly, we would limit Fleet’s broad language
regarding preemption of the actors’ Section 3344
claims to the unique facts of that case. In our view,
a Section 3344 claim is preempted under Fleet where
an actor or model with no copyright interest in the
work seeks to prevent the exclusive copyright holder
from displaying the copyrighted work. We do not
believe a Section 3344 claims is preempted under
Fleet where, as here, the defendant has no legal right
to publish the copyrighted work.

Id. at 374.

Because the Kaytel defendants had no legal right to distrib-
ute the DVDs the district court concluded that “Defendants
did not have federal rights which could preempt Plaintiffs’
state law rights. Thus Plaintiffs’ state law claims are not pre-
empted by federal copyright law.”

[5] We do not read Fleet or the Copyright Act so narrowly.
Whether a claim is preempted under Section 301 does not turn
on what rights the alleged infringer possesses, but on whether
the rights asserted by the plaintiff are equivalent to any of the
exclusive rights within the general scope of the copyright. The
question is whether the rights are works of authorship fixed
in a tangible medium of expression and come within the sub-
ject matter of the Copyright Act. If a plaintiff asserts a claim
that is the equivalent of a claim for infringement of a copy-
rightable work, that claim is preempted, regardless of what
legal rights the defendant might have acquired.

[6] In the instant case, we conclude that Gasper’s right of
publicity claim falls within the subject matter of copyright,
and that the rights he asserts are equivalent to the rights
within the scope of § 106 of the Copyright Act. The essence
 JORDAN VIDEO v. 144942 CANADA 11721
of Gasper’s claim is that the Kaytel defendants reproduced
and distributed the DVDs without authorization. His claim is
under the Copyright Act. Accordingly, we reverse the district
court and vacate Gasper’s judgment against the Kaytel defen-
dants for violation of his right of publicity under California law.3

II.

After the jury returned its verdict in favor of plaintiffs on
their copyright infringement claim, the district court granted
defendants’ motion JMOL. The court held that because
Gasper was employed by JJV, the motion picture works were
“works for hire” under the Copyright Act, 17 U.S.C. § 101.
Therefore, JJV, not Gasper, was the author of the works and
Gasper lacked standing. The court implicitly held that JJV
lacked standing because the registration was invalid. Plaintiffs
have appealed that decision, arguing that it is both legally
erroneous, inequitable and illogical given that only Gasper or
JJV could possibly own the copyrights and both were plain-
tiffs in the action. We agree.

[7] A district court can set aside a jury verdict and grant
JMOL “only if, under governing law, there can be but one
reasonable conclusion as to the verdict” and “only if ‘there is
no legally sufficient basis for a reasonable jury to find for that
party on that issue.” Winarto v. Toshiba Am. Elecs. Compo-
nents, Inc., 274 F.3d 1276, 1283 (9th Cir. 2001) (citations and
quotations omitted). We review de novo whether the films
were works for hire. Aymes v. Bonelli, 980 F.2d 857, 861 (2d
Cir. 1992).

The Copyright Act, 17 U.S.C. § 101, defines a work made
for hire as:
3
Because we vacate the damages award on the right of publicity claim,
we need not examine appellants’ argument that there was not enough evi-
dence to support the verdict or that the award wasn’t property apportioned.
11722 JORDAN VIDEO v. 144942 CANADA
(1) a work prepared by an employee within the scope
of his or her employment; or

(2) a work specially ordered or commissioned for
use as a contribution to a collective work, as part of
a motion picture or other audio visual work, as a
translation, as a supplementary work, as a compila-
tion, as an instructional text, as a test, as answer
material for a test, or as an atlas, if the parties
expressly agree in a written instrument signed by
them that the works shall be considered a work made
for hire.

[8] The district court correctly concluded that the films
could not be considered works for hire under § 101(2)
because there was no written instrument. Thus, if Gasper’s
creative work was performed as an independent contractor, he
would be considered the author.

It was undisputed, however, that Gasper was an employee
of JJV, at least for some purposes, leaving the question of
whether his “creative work” was within the scope of his
employment. The district court concluded that it was rejecting
as “concocted at trial” Gasper’s testimony that he always
intended that his “creative work” be kept separate from his
work for JJV and that he would have ownership of the copy-
rights. The court made its own factual findings that “JJV
intended he would hold the camera, light the set, write the
screenplay, produce and direct.”

The problem with the district court’s analysis is that JJV
was a one-man shop. Gasper was the sole officer, director,
and shareholder of JJV, exercised complete control over it,
and made all decisions concerning JJV and production of the
films. It was all Gasper all the time. JJV as employer and
Gasper as employee could certainly agree as to the scope of
the employee’s employment, and could agree that Gasper
should retain all copyrights. Since JJV was Gasper, JJV
 JORDAN VIDEO v. 144942 CANADA 11723
intended whatever Gasper intended, and if Gasper intended
that his creative work be outside the scope of his employment
with JJV, there was no one to disagree. See, e.g., M&A
Assocs., Inc. v. VCX, Inc., 657 F. Supp. 454, 459-60 (E.D.
Mich. 1987) (sole shareholder, director and officer of corpora-
tion that produced film was owner of the copyright).

Perhaps more importantly, even if the films were works for
hire, the district court was correct that Gasper simply made a
“mistake in listing himself as the author” on the copyright
registration forms. That mistake does not constitute a basis to
invalidate the copyright. “ ‘[I]nadvertent mistakes on registra-
tion certificates do not invalidate a copyright and thus do not
bar infringement actions, unless . . . the alleged infringer has
relied to its detriment on the mistake, or the claimant intended
to defraud the Copyright Office by making the misstate-
ment.’ ” Lamps Plus, Inc. v. Seattle Lighting Fixture Co., 345
F.3d 1140, 1145 (9th Cir. 2003) (quoting Urantia Found. v.
Maaherra, 114 F.3d 955, 963 (9th Cir. 1997)).

Defendants obviously did not rely on the mistake (if there
was one) to their detriment. The evidence presented demon-
strates that they pirated the DVDs without a care to whether
the DVDs were copyrighted and, if so, who owned the copy-
right. Nor did Gasper or JJV ever intend to defraud the Copy-
right Office. The typical work for hire dispute involves a
disagreement between the commissioning party or employer
and the commissioned party or employee over who owns the
copyright. See, e.g., Cmty. For Creative Non-Violence v.
Reed, 490 U.S. 730, 733-736 (1989). In the instant case, the
only two parties with any possible claim to ownership, JJV
and Gasper, both believed and intended that Gasper own the
copyright.

Indeed, there was no need to defraud anyone with respect
to ownership. If Gasper had really believed that JJV owned
the copyright, as defendants argue on appeal, he had no need
to lie on the registration forms. If he knew that JJV was the
11724 JORDAN VIDEO v. 144942 CANADA
owner and wanted to own them himself, he needed only to
transfer them to himself from JJV. Copyrights, like any other
property right, can be transferred by any means of convey-
ance. 17 U.S.C. § 201(d)(1). A simple written note or memo-
randum of transfer signed by himself on behalf of JJV would
have been sufficient, 17 U.S.C. § 204(a), and an earlier oral
assignment can be confirmed later in a writing. Billy-Bob
Teeth, Inc. v. Novelty, Inc., 329 F.3d 586, 591 (7th Cir. 2003).
Corporations cannot literally discuss anything. Id. Only
Gasper could have had discussions on behalf of JJV, and he
consistently testified that he and JJV intended that he be the
owner of the copyrights. If, as defendants argue, he honestly
knew that he had not effectively achieved ownership, he could
have at anytime simply memorialized that intent in writing.
He had no reason to defraud the Copyright Office or concoct
a story for purposes of this litigation.

Thus, had Gasper’s testimony been sufficient to support an
oral agreement between JJV and himself that any copyright
technically owned by JJV was to be conveyed to him, defen-
dants would have had no standing to complain that the agree-
ment was never put in writing. Section 204(a) is designed to
resolve disputes between owners and transferees and to pro-
tect copyright holders from persons mistakenly or fraudu-
lently claiming oral licenses or copyright ownership. Billy-
Bob Teeth, 329 F.3d. at 592. When there is no dispute
between the copyright owner and transferee, “ ‘it would be
unusual and unwarranted to permit a third-party infringer to
invoke § 204(a) to avoid suit for copyright infringement.’ ”
Id. (quoting Imperial Residential Designs, Inc. v. Palms Dev.
Group, Inc., 70 F.3d 96, 99 (11th Cir. 1995)).

[9] Although § 101 is not a statute of frauds section as is
§ 204, the reasoning of Imperial Residential Designs is none-
theless applicable. As noted above, § 101 is designed to estab-
lish ownership of a work as between a commissioning party
or employer on the one hand and the commissioned party or
employee on the other. It would be unusual and unwarranted
 JORDAN VIDEO v. 144942 CANADA 11725
to permit third parties such as the instant defendants to invoke
§ 101 to avoid a suit for infringement when there is no dispute
between the two potential owners, and both are plaintiffs to
the lawsuit. Accordingly, we conclude that the district court
erred in holding that the motion pictures were works for hire,
and reverse the court’s grant of defendants’ motion JMOL
invalidating the jury’s verdict of infringement.

III.

The jury awarded JJV and Gasper statutory damages for
copyright infringement in the amounts of $390,000 against
Kaytel Distribution, $390,000 against Leisure Time and $1.82
million against Elmaleh. Having determined that the trial
court erred in granting defendants’ motion JMOL, we must
decide whether the verdict should be reinstated or whether the
trial was so tainted by error that reinstatement would be
unfair. On appeal, defendants challenge several rulings on
these issues: (A) the district court’s handling of certain
requests for admissions; and (B) the court’s submitting to the
jury an allegedly confusing and misleading special verdict
form.

A. Defendants argue that the district court erred by permit-
ting JSI’s counsel to read to the jury 716 requests for admis-
sions (“RFAs”) as facts that had been admitted by Kaytel
Distribution. Early in the discovery phase of the JSI action,
pursuant to Fed. R. Civ. P. 36, JSI served Kaytel Distribution
with 716 separate RFAs. The RFAs were addressed to and
served only on Kaytel Distribution and related only to the JSI
action. Under the Rule, Kaytel Distribution had 30 days to
respond or the RFAs would be deemed admitted. Fed. R. Civ.
P. 36(a)(3). On June 9, 2006, prior to the expiration of the 30
days, JSI requested and received entry of default against Kay-
tel Distribution for failure to answer the first amended com-
plaint.

The Kaytel defendants dismissed their counsel, and on
August 4, 2006, their new counsel appeared in each of the
11726 JORDAN VIDEO v. 144942 CANADA
consolidated cases and then moved to vacate the default in the
JSI action. The court granted the motion over plaintiffs’
objection but ordered Kaytel Distribution to pay $18,683.90
in attorney’s fees. Within four days after the default was
vacated, Kaytel Distribution moved for leave to respond to the
RFAs, which had become due while it was in default. Judge
Tevrizian denied that motion without hearing.

After the case was reassigned to Judge Otero, the Kaytel
defendants moved in limine to exclude the introduction of the
“admissions,” arguing that because the court had entered
default against Kaytel Distribution before any response to the
RFAs was due, Kaytel Distribution could not respond to the
RFAs until the default was vacated. Judge Otero denied this
motion, stating that “defendants cite several cases which hold
that requests for admissions may not be served after entry of
a party’s default, but no authority for the idea that default sta-
tus absolves the responsibility to respond to a request for
admission served before entry of default.” (Emphasis in origi-
nal).

At trial, the court permitted JSI counsel’s to read all 716
RFAs to the jury. By way of explanation, the court told the
jury:

Prior to trial, there is discovery that each side is
allowed to accomplish. One form of discovery is
requests for admissions. Requests for admissions are
documents sent to the opposing party requiring the
party to either admit or deny the truth of facts
asserted in the request for admissions.

In this case, the plaintiffs served Kaytel with
requests for admissions. Kaytel responded that those
facts that have just been referenced are, in fact, true.
They are binding only as to Kaytel.

In a sidebar, defendants’ counsel objected to the court’s
statement that Kaytel had responded that the facts were true
 JORDAN VIDEO v. 144942 CANADA 11727
rather than telling the jury that they were deemed admissions.
The court rejected defendants’ objection and refused to clarify
its statement to the jury. As part of the final instructions, how-
ever, it did instruct the jury that:

The cases presented to you have been consolidated
for trial. Certain evidence was admitted and limited
to one or more parties. Do not consider it as to any
other party. Your attention was called to those mat-
ters when the evidence was admitted.

Certain facts have been introduced to you which
have been characterized as having been conclusively
admitted by Kaytel Distribution, Inc. You must treat
these facts as admitted by Kaytel Distribution and
only Kaytel Distribution.

Further, you are considering two consolidated cases,
one in which John Stagliano, Inc. is the plaintiff and
the other in which Mr. Ashley Gasper and Jules Jor-
dan Video, Inc. are the plaintiffs.

Admissions in one case are not applicable to the
other.

On appeal, the Kaytel defendants argue that the court erred
when it: (1) held that Kaytel Distribution was deemed to have
admitted the RFAs; (2) denied Kaytel Distribution leave to
withdraw the deemed admissions; and (3) advised the jury
that Kaytel Distribution had expressly admitted the RFAs.
This court reviews de novo the district court’s interpretation
of the Federal Rules of Civil Procedure. United States v. Clif-
ford Matley Family Trust, 354 F.3d 1154, 1159 n.4 (9th Cir.
2004). We review the denial of a motion to withdraw an
admission for an abuse of discretion. Hadley v. United States,
45 F.3d 1345, 1348 (9th Cir. 1995).

[10] The Federal Rules of Civil Procedure distinguish
between parties and non-parties in establishing available dis-
11728 JORDAN VIDEO v. 144942 CANADA
covery devices. Some rules, such as Rule 36, permit discovery
only from a party, while others permit discovery from non-
parties, but may impose additional burdens. For example,
under Rule 30 any person’s testimony may be taken by depo-
sition. If a person is a party, a simple notice of deposition is
sufficient to compel attendance, while a non-party’s atten-
dance can be compelled only by subpoena. See Blazek v. Cap-
ital Recovery Assocs., Inc., 222 F.R.D. 360, 361 (W.D. Wisc.
2004) (citing In re Liu, 282 B.R. 904, 908 (C.D. Ca. 2002)).

[11] The rules do not indicate into which category a
defaulted defendant falls, and there is little guidance in the
case law. We agree with the Blazek court’s analysis, however,
that a defaulted defendant should be treated as a non-party. As
the court in Blazek noted, a defaulted defendant loses many
of the rights of a party, chief among them the right to contest
the factual allegations of the complaint. Id. A defaulted defen-
dant cannot answer the complaint unless and until the default
is vacated. It stands to reason that if a defaulted defendant
cannot answer allegations of the complaint, it also cannot
respond to requests for admissions, at least until the default is
vacated. Therefore, we agree with the Kaytel defendants that
the trial court erred in deeming the requests admitted for fail-
ing to respond when Kaytel Distribution was prevented from
responding by the court’s entry of default. We also agree that
the court abused its discretion when, after vacating the
default, it refused to give Kaytel Distribution time to respond.

We do not agree with the Kaytel defendants, however, that
the court’s error in allowing counsel to read the RFAs to the
jury requires a new trial, because we conclude that the error
did not affect the defendants’ substantial rights. When review-
ing the effect of an erroneous evidentiary ruling, we begin
with a presumption of prejudice. “That presumption can be
rebutted by a showing that it is more probable than not that
the jury would have reached the same verdict even if the evi-
dence had [not] been admitted.” Obrey v. Johnson, 400 F.3d
691, 701 (9th Cir. 2005).
 JORDAN VIDEO v. 144942 CANADA 11729
[12] Applying this standard to the instant case, we con-
clude that the presumption of prejudice has been rebutted and
that it is more probable than not that the jury would have
reached the same verdict. We come to this conclusion for two
reasons. First, the evidence was admitted in the JSI action
only, and the jury was properly and specifically instructed that
the admissions in the RFAs entered into evidence in one case
were not to be considered in the other case. There is a strong
presumption that juries follow curative instructions. See Doe
ex. rel. Rudy-Glanzer v. Glanzer, 232 F.3d 1258, 1270 (9th
Cir. 2000). We see nothing in the record to conclude that the
jury failed to follow these instructions.

Second, although the admissions in the JSI action were
damaging as to Kaytel Distribution as well as other defen-
dants, their exclusion from the trial would not have helped the
Kaytel defendants in the JJV action. This is because plaintiffs
in that action read to the jury 99 equally damaging deemed
admissions that defendants do not and cannot challenge on
appeal. Like JSI, Gasper and JJV served Kaytel Distributions
with RFAs early in the proceedings. Responses to these RFAs
were due before Kaytel Distribution was in default, yet it
never responded to them and never moved to withdraw the
deemed admissions. They were admitted at trial without
objection. These admissions include that Kaytel Distribution
formed Jacky’s One Stop, created copies of the 13 films with-
out license to do so, used Elmaleh’s cellular phone to sell
counterfeit DVDs, and invoiced sales of those counterfeit
DVDs through Jacky’s One Stop. These 99 admissions, alone,
are sufficient to support the verdict.

[13] We conclude, therefore, that the inclusion of the evi-
dence did not taint the jury’s verdict. Because we must pre-
sume that the jury followed the court’s instructions, and given
the extent of the admissions properly entered into evidence in
the JJV action, it is more probable than not that the jury
would have reached the same verdict.
11730 JORDAN VIDEO v. 144942 CANADA
B. Defendants also contend that the district court erred by
submitting to the jury a “confusing and misleading” special
verdict form that was 31 pages long containing 170 separate
questions. We have reviewed the form and, although it is
indeed lengthy, we do not find it particularly confusing. The
length stems from the number of plaintiffs and defendants,
and the form required the jury to determine whether each
defendant infringed each of the thirteen DVD titles involved
in the case. The verdict form provided a roadmap for that
determination, and we do not see any objection by defendants
to that roadmap other than a general objection to the use of
a special verdict form.

At the instruction conference, defendants offered an alter-
nate verdict form that tracked the language of the form ulti-
mately used, but had additional questions related to ownership
of the copyrights. When the court inquired as to the necessity
of such instructions, defense counsel indicated that there were
“meaningful issues in the case as to who is in fact the owner
or exclusive licensee.” When the court asked if that was not
“essentially a legal issue for the court to determine,” defense
counsel indicated that he had no problem with submitting the
issue to the court on post-trial motions. That is precisely what
happened.

On appeal, defendants complain that the verdict form asked
the jury, “[i]s Kaytel directly, vicariously or contributorily lia-
ble for infringement of copyrights owned or exclusively
licensed by plaintiffs,” without providing a method for the
jury to delineate whether the infringement was direct, vicari-
ous or contributory. Thus, the defendants argue that the jury
could have concluded that defendants vicariously infringed,
which according to them was never an issue in the case.

As noted, the only issue raised by defendants at the final
conference was the issue of ownership. The special verdict
form offered by defendants tracked the language in the form
ultimately given. The record does not reveal any alternate
 JORDAN VIDEO v. 144942 CANADA 11731
form offered by defendants separating the three bases for
infringement. Thus, absent an objection and alternative form,
defendants failed to properly object at trial under Fed. R. Civ.
P. 51, and the issue is not preserved for review by this court.
Nor is there anything to suggest that any specific objection,
as opposed to a general objection to a special verdict form,
would have been futile or a “pointless formality,” based on
previous court rulings. Thus, defendants cannot rely on Mon-
roe v. City of Phoenix, Arizona, 248 F.3d 851, 858 (9th Cir.
2001), which indicates that an objection may be a pointless
formality when, (1) throughout the trial the party argued the
disputed matter with the court, (2) it is clear from the record
that the court knew the party’s grounds for disagreement with
the instruction, and (3) the party offered an alternative instruc-
tion.

[14] Accordingly, we reject defendants’ contention that the
district court erred by submitting the special verdict form to
the jury. The form fully and fairly presented to the jury the
issues it was called upon to decide and afforded defendants
adequate opportunity to present their case. United States v.
20832 Big Rock Drive, 51 F.3d 1402, 1408 (9th Cir. 1995).

CONCLUSION

[15] For all the foregoing reasons the decision of the dis-
trict court is REVERSED. The jury verdict in Gasper’s favor
on his right of publicity claim and California Civil Code
§ 3344 is VACATED. The jury verdict in favor of JJV and
Gasper based on copyright infringement is REINSTATED.
We REMAND for proceedings consistent with this opinion.
The parties shall bear their own costs. See Fed. R. App. P.
39(a)(4).