FILED
NOT FOR PUBLICATION
OCT 06 2016
UNITED STATES COURT OF APPEALS MOLLY C. DWYER, CLERK
U.S. COURT OF APPEALS
FOR THE NINTH CIRCUIT
ALMUT REINICKE, No. 14-56467
Plaintiff-Appellant, D.C. No. 3:12-cv-01405-GPC-
KSC
v.
CREATIVE EMPIRE, LLC, a Michigan MEMORANDUM*
limited liability company, DBA
Mangolanguages.com; and DOES, 1-10,
inclusive,
Defendants-Appellees.
Appeal from the United States District Court
for the Southern District of California
Gonzalo P. Curiel, District Judge, Presiding
Argued and Submitted August 29, 2016
Pasadena, California
Before: KOZINSKI and BYBEE, Circuit Judges, and WALTER, Senior District
Judge.**
*
This disposition is not appropriate for publication and is not precedent
except as provided by 9th Cir. R. 36-3.
**
The Honorable Donald E. Walter, Senior United States District Judge
for the Western District of Louisiana, sitting by designation.
The parties agree that the Ninth Circuit’s test for whether an implied,
nonexclusive copyright license can be granted is set forth in Asset Marketing
Systems, Inc. v. Gagnon, 542 F.3d 748, 754–55 (9th Cir. 2008). “Generally, a
‘copyright owner who grants a nonexclusive license to use his copyrighted material
waives his right to sue the licensee for copyright infringement’ and can sue only
for breach of contract.” Sun Microsystems, Inc. v. Microsoft Corp., 188 F.3d 1115,
1121 (9th Cir. 1999) (quoting Graham v. James, 144 F.3d 229, 236 (2d Cir.
1998)), overruling on other grounds recognized by Perfect 10, Inc. v. Google, Inc.,
653 F.3d 976, 979 (9th Cir. 2011); see also Effects Assocs., Inc. v. Cohen, 908 F.2d
555, 559 (9th Cir. 1990) (holding that an implied grant of a nonexclusive license to
use a copyrighted work precludes a copyright infringement claim).
Here, the dispute centers around Reinicke’s intent. “The relevant intent is
[Reinicke’s] objective intent at the time of the creation and delivery of the [work]
as manifested by the parties’ conduct.” Asset Mktg., 542 F.3d at 756 (citations
omitted). Reinicke was initially hired for a small translation project; then retained
for Mango 1.0 pursuant to a written agreement; and finally, retained for Mango
2.0, with compensation on an hourly basis. It is undisputed that there was no
written contract pertaining to the Mango 2.0 work. Further, Reinicke’s failed
requests to execute a contract focused on payments for Mango’s use of her work,
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not on any limitations of such use. This case is thus distinguishable from a case
where unsuccessful efforts to execute a contract weighed against a finding of
intent, because negotiations expressly involved retention of the copyright and
limitation on use of the copyrighted work. See Johnson v. Jones, 149 F.3d 494, 498
(6th Cir. 1998); id. at 500 (“[E]very objective fact . . . points away from the
existence of an implied license.”).
The record reflects that the sole and express purpose of Reinicke’s work was
its use in Mango 2.0. Regardless of the Mango 2.0 compensation terms, Reinicke
wanted Mango to use and distribute her work, in order to drive overall Mango
sales, from which Reinicke would benefit under the Mango 1.0 commission
agreement. In developing and submitting language content intended for
distribution which, if distributed, would infringe her copyright, Reinicke gave
Mango an implied license to use her work. See Oddo v. Ries, 743 F.2d 630, 633–34
(9th Cir. 1984). And, despite failing to execute a commission-based agreement,
Reinicke continued to create and deliver the work, at Mango’s request, without
ever stating that Mango’s use thereof was contingent upon her receipt of
commission payments. See Asset Mktg., 542 F.3d at 757.
Although Reinicke concedes that the relevant inquiry is one of objective,
rather than subjective, intent, she nonetheless contends that Mango made false
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promises of commission payments which fraudulently induced her to create and
deliver the work. Thus, Reinicke argues that principles of California contract law
apply to vitiate her consent to grant an implied license. A thorough review of the
parties’ communications belies Reinicke’s claims. See Hansen v. United States, 7
F.3d 137, 138 (9th Cir. 1993) (“[A party] cannot rely on conclusory allegations
unsupported by factual data to create an issue of material fact.”). Therefore,
determining whether fraudulent inducement can vitiate intent in this context is
wholly unnecessary, because there is insufficient evidence to support a finding of
fraud.
Every objective fact, as manifested by Reinicke’s conduct, supports a
finding that an implied license existed. See Asset Mktg., 542 F.3d at 756 (citing
Effects, 908 F.2d at 559 n.6). The district court correctly found that Reinicke
granted Mango an implied license, which precluded this copyright infringement
suit.
AFFIRMED.
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