RADIO TV v NEW WORLD, 9756418
U.S. 9th Circuit Court of Appeals
RADIO TV v NEW WORLD
9756418
RADIO TELEVISION ESPANOLA S.A., aSpanish Corporation; TELEVISIONESPANOLA S.A., a SpanishCorporation, Nos. 97-56418Plaintiffs-Appellants- 98-55128Cross-Appellees,D.C. No.v. CV 96-02798-WDKNEW WORLD ENTERTAINMENT, LTD., OPINIONa Delaware Corporation,Defendant-Appellee-Cross-Appellant.
Appeals from the United States District Courtfor the Central District of CaliforniaWilliam D. Keller, District Judge, PresidingArgued and SubmittedMarch 4, 1999--Pasadena, CaliforniaFiled July 16, 1999Before: Warren J. Ferguson, Melvin Brunetti, andThomas G. Nelson, Circuit Judges.Opinion by Judge Ferguson
_____________________________COUNSEL John R. Hurt, Hurt, Sinisi & Papadakis, San Diego, Califor-nia; David R. Shaub, Shaub & Williams, Los Angeles, Cali-fornia, for the plaintiffs-appellants-cross-appellees.David Pettit, Caldwell, Leslie, Newcombe & Pettit, LosAngeles, California; George R. Hedges, Quinn, Emanuel,Urquhart, Oliver & Hedges, Los Angeles, California, for thedefendant-appellee-cross-appellant.
_____________________________OPINION FERGUSON, Circuit Judge:Radio Television Espanola sued New World Entertainmentfor breach of contract, claiming that New World failed tohonor a contract granting Radio Television an exclusivelicense to broadcast two of New World's television programs.The district court granted summary judgment for New Worldbecause the parties had not complied with 17 U.S.C.S 204(a)'s requirement that transfers of copyright be in writ-ing. On appeal, we affirm on the merits but reverse the districtcourt's subsequent determination that New World's applica-tion for costs was untimely.I. BACKGROUNDNew World Entertainment is an American company thatproduces and distributes television programs. TelevisionEspanola is a Spanish company owned by Radio TelevisionEspanola, a company owned by the country of Spain. Televi-sion Espanola acquires rights to broadcast television programsfor its principal, Radio Television, and then broadcasts thoseprograms throughout Spain. New World and Television Espa-nola had conducted business with each other since at least1988.In April 1994, the two companies met at a television mar-ket in Cannes, France, where Television Espanola allegesthere was an oral agreement for an exclusive license for twoof New World's animated programs, Spiderman and MarvelAction Hour. After the Cannes meeting, New World informedTelevision Espanola that any licensing of Spiderman wouldhave to be accompanied by deals for Marvel Action Hour andtwo other programs, Tales From the Crypt and The Extraordi-nary.The two parties met over the issue. Television Espanolaclaims that the discussions culminated in a final deal licensingSpiderman and Marvel Action Hour. Following that meeting,New World's negotiating agent, Alejandro Garcia, signed twointernal deal memos dated July 11, 1994, describing the termsof the alleged agreement. Both deal memos, completely inter-nal to New World, state that the contracts were to be preparedby Television Espanola.From that point on, many more letters, faxes, and memoschanged hands. The parties sent memos discussing detailsconcerning regional affiliates, format of the programs, price,and quantity. Not until May 26, 1995, did Television Espa-nola finally deliver the proposed licensing contracts to NewWorld. New World, however, never signed the contracts.Throughout the process of negotiating for Spiderman andMarvel Action Hour, the parties had several communicationsregarding the program The Extraordinary. In June 1995, NewWorld sent Television Espanola a letter seeking further nego-tiations over The Extraordinary. A Television Espanola exec-utive responded by sending a fax to New World claiming thatthe contracts for Spiderman and Marvel Action Hour werecomplete and must be followed regardless of the status of anydeal for The Extraordinary. New World did not agree, andsent a letter on August 8, 1995, to Television Espanola accus-ing it of acting unprofessionally and stating that New Worldhad decided "effective immediately to leave without effect alland each one of our negotiations between our companies withrespect to any and all New World programming . . . . " Televi-sion Espanola responded in writing accusing New World of"blackmail" for refusing to honor its obligation on Spidermanwithout an agreement for The Extraordinary. At that point, theparties ended their relationship.It is important to note what was happening at this point intime between New World and another Spanish television sta-tion, Antena 3. Since at least July 17, 1995, New World hadbeen negotiating with that station regarding airing a packageof New World shows: Spiderman and The Extraordinary. OnJanuary 24, 1996, months after the breakdown of negotiationswith Television Espanola, Antena 3 and New World signed aformal licensing agreement for the broadcast of Spidermanand The Extraordinary.As a result of the breakdown in the relationship, TelevisionEspanola filed this suit against New World on April 19, 1996,in the Central District of California.1 Ten days later, Televi-sion Espanola filed its first amended complaint, the complaintthat forms the basis of this action. The complaint allegedbreach of contract, unjust enrichment, unfair competition,2money due and owing, and declaratory relief. In its answer,New World raised 17 U.S.C. S 204(a) as an affirmativedefense to all of Television Espanola's claims. New Worldfiled a motion for summary judgment, and the district courtheard arguments on the motion on August 4, 1997. The nextday, August 5, the court issued a minute order granting themotion for summary judgment, finding both that there was nomeeting of the minds to form a contract and that the partieshad not complied with S 204(a). The minute order wasentered in the civil docket on August 6, 1997. TelevisionEspanola appealed the grant of summary judgment on Sep-tember 5, 1997, and the appeal was docketed with this courton October 22, 1997.Believing the entry of the minute order did not constitutea final judgment, New World lodged a proposed judgmentwith the district court on October 2, 1997. On October 6,1997, the district court signed the judgment and entered it inthe civil docket. Eleven days later, on October 17, 1997, NewWorld filed its bill of costs pursuant to local rule. TelevisionEspanola, believing the August 6 entry of the minute orderconstituted final judgment, objected to the district court'sentry of a second judgment in the case. On November 25,1997, the district court considered New World's bill of costsalong with Television Espanola's objection and denied NewWorld's application, reasoning that the August 5 minute orderentered in the docket on August 6 constituted entry of finaljudgment; accordingly, New World was not entitled to costsbecause its application did not come within fifteen days of thecourt's entering judgment on August 6, 1997. The denial ofcosts was entered on December 1, 1997, and New Worldtimely filed an appeal. On stipulation of the parties, a NinthCircuit mediator ordered that the two separate appeals be con-solidated and briefed in cross-appeal format.II. DISCUSSIONA. Breach of ContractWe review the district court's grant of summary judgmentde novo. Margolis v. Ryan, 140 F.3d 850, 852 (9th Cir. 1998).Viewing the evidence in the light most favorable to the non-moving party, we must determine whether there are any genu-ine issues of material fact and whether the district courtcorrectly applied the relevant substantive law. Id. Under thatstandard, we hold that the district court was correct in con-cluding that New World was entitled to summary judgmentbecause there was no writing satisfying the requirements of17 U.S.C. S 204(a).[1] Our analysis begins with a look at the copyright stat-utes. Under United States law,3 the owner of a copyright of"audiovisual work" has the exclusive rights to copy, distrib-ute, or display the work publicly. 17 U.S.C. S 106. The ownercan sell or license the rights to the work as long as the transfercomplies with 17 U.S.C. S 204(a), which states as follows: A transfer of copyright ownership,4 other than by operation of law, is not valid unless an instrument of conveyance, or a note or memorandum of the trans- fer, is in writing and signed by the owner of the rights conveyed or such owner's duly authorized agent.This court has consistently found copyright license agree-ments invalid that have not complied with S 204(a). SeeKonigsberg Int'l. Inc. v. Rice, 16 F.3d 355, 356-57 (9th Cir.1994); Effects Assocs., Inc. v. Cohen, 908 F.2d 555, 556-58(9th Cir. 1990); Valente-Kritzer Video v. Pinckney, 881 F.2d772, 775 (9th Cir. 1989).[2] No magic words must be included in a document to sat-isfy S 204(a). Rather, the parties' intent as evidenced by thewriting must demonstrate a transfer of the copyright. Valente-Kritzer, 881 F.2d at 775; accord 3 Melville B. Nimmer &David Nimmer, Nimmer on Copyright, S 10.03[A][2] at 10-37("As with all matters of contract law, the essence of theinquiry here is to effectuate the intent of the parties."). Section204(a)'s "requirement is not unduly burdensome . . . . Therule is really quite simple: If the copyright holder agrees totransfer ownership to another party, that party must get thecopyright holder to sign a piece of paper saying so. It doesn'thave to be the Magna Carta; a one-line pro forma statementwill do." Effects Assocs., 908 F.2d at 557. "The writingshould also serve as a guidepost for the parties to resolve theirdisputes." Konigsberg, 16 F.3d at 357.Television Espanola first claims that a fax sent from NewWorld to Television Espanola on November 9, 1994, satisfiesS 204(a). In the fax, a New World executive, Alejandro Gar-cia, complains to Television Espanola about Television Espa-nola's decision not to buy The Bold and the Beautiful.Apparently, Television Espanola turned down The Bold andthe Beautiful because New World sold one of its other pro-grams, OP Center, to Antena 3. Garcia states in the fax thatif Television Espanola had acted faster on OP Center it couldhave bought both OP Center and The Bold and the Beautiful.Garcia then wrote: "But it is not thus, very much in spite ofall my desires and efforts. I ask you, what about Spidermanand Marvel? Perhaps it is not obvious to TVE the importancewith which New World decided to close [the deal for that]5animation with TVE." Garcia concluded that "[p]erhaps themistake was mine in not having made Marvel and Beauty andPower a package . . . ."[3] The Garcia fax does not satisfyS 204(a). There is noth-ing in the Garcia fax that sets forth the terms of any licenseagreement regarding Spiderman or Marvel Action Hour.Surely, the fax references a deal, but it does not specify any-thing about that deal or whether that deal is for an exclusivelicense for the program or for other broadcast rights. A merereference to a deal without any information about the dealitself fails to satisfy the simple requirements ofS 204(a). SeeKonigsberg, 16 F.3d at 357 (stating that the writing should"serve as a guidepost for the parties"). Without more, thecomment in the Garcia fax is merely a part of negotiationsrather than an "instrument of conveyance" or "memorandumof the transfer."[4] The second document relied upon by Television Espa-nola is a January 26, 1995, fax from New World's OperationsManager, Fefi Toll, to Television Espanola. That fax statesthat the Spiderman program should be "divided into two con-tracts which will be issued together and will provide as"stated in the rest of the fax. New World's Alejandro Garciaapparently authorized the division of the contracts, but theywould "have to be done by year" and "the package cannot bebroken up." The fax concludes: "[w]ith nothing further at thistime, awaiting the contracts . . . ."[5] Again, this piece of correspondence does not satisfy therequirements of S 204(a). First, as with the Garcia fax, thereis no mention of a grant of an exclusive license; rather, the faxjust talks about the delivering of episodes to Television Espa-nola. Second, with the fax concluding that New World is"awaiting the contracts," we can view the fax only as part ofan ongoing back-and-forth between two parties hammeringout the final details of the agreement. The statement that NewWorld is waiting for the contracts "undercuts the hint offinality" that the fax may otherwise contain. See Valente-Kritzer, 881 F.2d at 775. Thus, as with the Garcia fax, theToll fax does not constitute an "instrument of conveyance" or"memorandum of the transfer" as required byS 204(a).[6] Television Espanola also argues that if the two faxesdiscussed above are not individually sufficient to satisfyS 204(a), they meet the requirements when looked at togetherand in conjunction with two other writings. The first extrawriting is a New World internal deal memo. The deal memolists the terms of a "new deal" between Television Espanolaand New World: Spiderman and Marvel Action Hour for fiveyears at a total license fee of $871,000. Written across thedeal memo in large script letters is "Contract To Be Done byTVE [Television Espanola]." The second extra writing is afax from Television Espanola to New World's Fefi Toll onSeptember 16, 1994. That fax states that Television Espanola"would appreciate it if you would confirm to me the condi-tions of contract for" Spiderman and Marvel Action Hour.The fax then lists the dates, price, and delivery method forboth series. At the end, the fax states that the "contracts willbe sent" to New World.[7] Those two documents, although more detailed than thetwo documents relied on by Television Espanola individually,6do not transform the other insufficient documents into writ-ings that satisfy S 204(a). First, both of the additional docu-ments refer to contracts that are pending. That languageindicates that there is no finalized deal but rather merelynegotiations that the parties are attempting to finalize. With-out language indicating finality, S 204(a) is not satisfied. See3 Nimmer, supra, S 10.03[A][3 ] at 10-38 ("[T]he mere prepa-ration of written proposals back and forth, which neverresulted in a final meeting of the minds, does not suffice toconfirm a purportedly `oral contract.' "). Second, neither ofthe faxes sent by New World (the Garcia fax and the Toll fax)reference these two additional writings. Without any referenceto these additional writings, we are reluctant to somehowdeem them incorporated into the two writings TelevisionEspanola claims satisfy S 204(a). Thus, the two additionaldocuments cited by Television Espanola do not change thefact that there is no writing satisfying the requirements ofS 204(a). See PMC, Inc. v. Saban Entertainment, Inc., 52 Cal.Rptr. 2d 877, 884 (Ct. App. 1996) (finding a series of docu-ments "taken together" not to satisfy the requirements ofS 204(a)).None of the out-of-circuit cases relied upon by TelevisionEspanola changes this conclusion. All of the cases in whichother courts have found a writing to raise a triable issue offact as to whether it satisfied S 204(a) contain much morecompelling facts than those here. See Schiller & Schmidt, Inc.v. Nordisco Corp., 969 F.2d 410, 413 (7th Cir. 1992) (anactual sales agreement between parties); Dean v. Burrows,732 F. Supp. 816, 823 (E.D. Tenn. 1989) (an endorsed checkand a written transfer agreement recorded with the CopyrightOffice); Kenbrooke Fabrics, Inc. v. Soho Fashions, Inc., 690F. Supp. 298, 300-01 (S.D.N.Y. 1988) (two letters, one spe-cifically stating that it authorized the transfer of ownership ofthe materials and the other an invoice for the sale of the mate-rials); Wales Indus. Inc. v. Hasbro Bradley, Inc., 612 F. Supp.510, 514 (S.D.N.Y. 1985) (a document stating that the party"does hereby sell, assign, transfer and set over to [the otherparty] the entire right, title and interest to any copyrights. . .").Furthermore, three of those cases, Dean, KenbrookeFabrics, and Wales Industrial involve actions by third partieschallenging a copyright transfer that the transferor and trans-feree agree took place. Courts have held that in situations "inwhich the copyright holder appears to have no dispute with itslicensee on [the issue of transfer], it would be anomalous topermit a third party infringer to invoke this provision againstthe licensee." Eden Toys, Inc. v. Florelee Undergarment Co.,Inc., 697 F.2d 27, 36 (2d Cir. 1982); accord Imperial Resi-dential Design, Inc. v. Palms Dev. Group, Inc., 70 F.3d 96, 99(11th Cir. 1995) (adopting the rule of Eden Toys ); Kenbrooke,690 F. Supp. at 301 (applying the rule of Eden Toys); 3 Nim-mer, supra, S 10.03[A][3] at 10-38. That circumstance is notpresent here.Section 204(a) has a simple requirement in order for a grantof an exclusive license to be valid -- put it in writing. If theparties really have reached an agreement, they can satisfyS 204(a) with very little effort. Here, there is no genuine issueof material fact as to whether that minimal step was taken: itwas not. Accordingly, the district court properly granted sum-mary judgment in favor of New World based on S 204(a).7B. Denial of CostsWe review de novo the district court's decision that it didnot have the authority to award costs because New World'sapplication was filed late. See Russian River Watershed Pro-tection Comm. v. City of Santa Rosa, 142 F.3d 1136, 1144(9th Cir. 1998).[8] Under Federal Rule of Civil Procedure 54(d)(1), costsare awarded to the prevailing party "as of course." Rule54(d)(1) though does not specify a time for the prevailingparty to file a bill of costs. The Central District of California'slocal rules fill that void by requiring a bill of costs to be filedwithin a period of "fifteen (15) days after entry of judgment."C.D. Cal. R. 16.3.8 By the plain language of that rule, the trig-because of S 204(a)), aff'd, 714 F.2d 123 (3d Cir. 1983); 3 Nimmer, supra,S 10.03[A][5] at 10-42 (listing among arguments that "courts haverejected" as "unavailing" the argument "characterizing the claim as onefor breach of an oral contract rather than for infringement of the copyrightorally transferred"). The district court's granting of summary judgment onthe alternative ground that there was no meeting of the minds was thusunnecessary.8 The full text of Local Rule 16.3 is as follows: BILL OF COSTS -- FILING AND FORM -- NOTICE The prevailing party who is awarded costs shall have fifteen (15) days after entry of judgment to file and serve a Bill of Costs. The Bill of Costs shall be attached to a Notice of Application to the Clerk to Tax Costs.gering event for beginning the time period for filing the billof costs is the "entry of judgment."[9] What constitutes "entry of judgment" is delineated bythe Federal Rules of Civil Procedure and the Local Rules forthe Central District of California. Federal Rule 58, entitled"Entry of Judgment," states in pertinent part as follows:"Every judgment shall be set forth on a separate document. Ajudgment is effective only when so set forth and when enteredas provided in Rule 79(a)." Fed. R. Civ. P. 58. Rule 79(a),entitled "Books and Records Kept by the Clerk and EntriesTherein: Civil Docket," sets forth the requirements for howthe clerk of the court must enter items in the civil docket. Therelevant portion of Rule 79(a) is as follows: All papers filed with the clerk, all process issued and returns made thereon, all appearances, orders, ver- dicts, and judgments shall be entered chronologically in the civil docket on the folio assigned to the action and shall be marked with its file number. These entries shall be brief but shall show the nature of each paper filed or writ issued and the substance of each order or judgment of the court and of the returns showing execution of process. The entry of an order or judgment shall show the date the entry is made.Fed. R. Civ. P. 79(a).[10] The two rules go hand in hand: Rule 58 tells the par-ties what types of documents constitute judgment, and Rule79(a) tells the parties how the clerk must enter those docu-ments on the civil docket. Only when both rules are satisfiedis there an "entry of judgment." See Fed. R. Civ. P. 58 ("Ajudgment is effective only when so set forth [according toRule 58] and when entered as provided in Rule 79(a)."); cf.Calhoun v. United States, 647 F.2d 6, 8-9 (9th Cir. 1981)(both requirements must be met for there to be entry of judg-ment triggering notice of appeal filing periods).[11] Central District local rules not only set forth the timeperiod for filing a bill of costs but also clarify what cannotconstitute an "entry of judgment" in the Central District underRules 58 and 79(a). Local Rule 14.10.5 provides as follows: ENTRY OF JUDGMENT -- MEMORANDUM OF DECISION, OPINION, MINUTE ORDER -- Notation in the civil docket of entry of a memoran- dum of decision, an opinion of the Court, or a minute order of the Clerk shall not constitute entry of judg- ment pursuant to F.R.Civ.P. 58 and 79(a) unless spe- cifically ordered by the judge.C.D. Cal. R. 14.10.5. The Local Rule is a clarification of Rule58 and furthers the separate document requirement by statingthat memorandums of decision, opinions, and minute orderswill not satisfy the requirements of Rule 58, even whenentered into the civil docket. The local rule provides anexception, whereby a Central District judge may use suchdocuments to constitute entry of judgment under Rule 58 ifthe judge specifically and affirmatively orders that "notationin the civil docket" of such a document shall "constitute entryof judgment pursuant to F.R.Civ.P. 58 and 79(a). " Saidanother way, the clerk's act of entering a minute order--evena minute order that would satisfy the separate documentrequirement--can not effect an entry of judgment unless thedistrict court judge specifically orders it to be so.9With that background, we must look to the facts of this caseto determine whether there was an "entry of judgment" onAugust 6; if there was an "entry of judgment" on that date,New World's bill of costs, filed on October 17, was untimely.[12] The official court record contains a document datedAugust 5, 1997, with the standard heading "Civil Minutes -General." This type of document is commonly referred to asa "minute order." A minute order is "a description of whattranspired in the courtroom." Carter v. Beverly Hills Sav. &Loan Ass'n, 884 F.2d 1186, 1189 (9th Cir. 1989). The ordernotes that only the district court judge and the deputy clerkwere present; no attorneys or court reporter were present.Under the heading "proceedings" is the following: Before the Court is Defendant's motion for sum- mary judgment and Defendant's motion for leave to file a counterclaim. For the reasons stated at the hearing on August 4, 1997, the Court concludes that there was no meeting of the minds and the parties did not form a contract. The Court further finds that RTE has not demon- strated a writing transferring New World's rights in Spiderman and Marvel Action Hour to RTE that is signed by New World and communicated to RTE as required by 17 U.S.C. S 204(a). Therefore, Defen- dant's motion for summary judgment is granted. Defendant's motion for leave to file a counter- claim is mooted because Defendant's counsel stipu- lated at the hearing that the counterclaim would be withdrawn if the motion for summary judgment was granted. IT IS SO ORDERED.The judge did not sign the document. Only the initials of thedeputy clerk appear on the bottom right corner of the docu-ment. Two stamps appear on the top of the document indicat-ing that it was filed on August 5 and entered on August 6.10[13] The corresponding entry in the civil docket for thecase classified the filing as minutes:8/5/97 70 MINUTES: granting motion for summary judgment [39-1]. (ENT 8/6/97) MD JS 6 mld cpys & ntc terminating case by Judge Wil- liam D. Keller CR: none present (pbap) [Entry date 08/06/97]In contrast, other entries in the civil docket for the casebegin with other capitalized words such as "ORDER,""OBJECTIONS," "JUDGMENT," and "NOTICE."[14] As noted above, in order to constitute entry of judg-ment, the document must meet the requirements of Local Rule14.10.5; the judge must "specifically order[ ]"that the minuteorder shall constitute entry of judgment upon the notation inthe docket. The judge--not the clerk--must make that order.See Wood v. Coast Frame Supply, Inc., 779 F.2d 1441, 1442(9th Cir. 1986). Nothing of the sort occurred here. The judgedid not write any language upon the minute order whichwould indicate that he was ordering that the notation in thedocket would constitute entry of judgment. Nor did the judgeexecute a separate document to order that the notation on thedocket of minute order should constitute entry of judgment.[15] The language "IT IS SO ORDERED " which appearson the clerk's minute order is insufficient to meet the localrule's requirement. This language merely indicates that sum-mary judgment was ordered and does not order that notationin the civil docket shall constitute entry of judgment. Further,we do not believe that the Rule 77(d) stamp stating "THISCONSTITUTES NOTICE OF ENTRY AS REQUIRED BYFRCP RULE 77(d)," placed on the minute order by the clerk,is sufficient to bring the minute order within the requirementsof the local rule. Notice of entry pursuant to Rule 77(d) doesnot answer whether the judge specifically ordered the minuteorder to be entered pursuant to Local Rule 14.10.5. Becausewe hold that the minute order does not satisfy the require-ments of Local Rule 14.10.5 to constitute entry of judgment,we need not determine whether the minute order also satisfiesthe separate document requirement of Rule 58.11[16] There was no entry of judgment on August 6, 1997. Assuch, the time for filing a bill of costs did not begin to runupon the docket entry of the August 5th minute order. With-out any judgment entered on August 6, New World was notrequired at that point in time to file its bill of costs. The dis-trict court's decision of November 25 to the contrary was inerror.[17] We note further that the district court's November 25minute order was rendered in the absence of jurisdiction.When Television Espanola's appeal of the district court'sdecision was docketed with the Ninth Circuit on October 22,1997, the district court lost jurisdiction to review its October6 entry of judgment. See Fed. R. Civ. P. 60(a) ("During thependency of an appeal, [mistakes in judgment] may be so cor-rected before the appeal is docketed in the appellate court, andthereafter while the appeal is pending may be so correctedwith leave of the appellate court."). Thus, technically, the dis-trict court's October 6 entry of judgment remains valid,12 andNew World's bill of costs lodged with the district court onOctober 17 is a timely application for costs under Local Rule16.3. All that remains for the district court to do is evaluatethe bill and award costs to New World.Although the decision we render today on this issue mayseem to be based on legal minutiae, the matters at stake areweighty. The due administration of justice would be incom-plete without giving the prevailing party fair notice of theneed to file a bill of costs. When a court does not follow thefederal rules or its own local rules, it cannot expect the pre-vailing party to be aware of its rights. In the Central Districtof California, to give the prevailing party that awareness, sim-ple procedures such as rendering a judgment in a separatedocument and entering that judgment as a judgment on thecivil docket are all that have to be followed. The rules requireno more than that, but cannot be satisfied with less.III. CONCLUSIONThe district court's grant of summary judgment in favor ofNew World is affirmed. On the issue of costs, we reverse thedistrict court's determination that New World's bill of costswas untimely and remand for an award of costs to NewWorld.AFFIRMED in part, REVERSED in part, and RE-MANDED.Costs on appeal are awarded to New World. the end
___________________________FOOTNOTES 1 Subject matter jurisdiction was based on diversity of citizenship. See28 U.S.C. S 1332.2 The cause of action for unfair competition was voluntarily dismissedby Television Espanola on April 24, 1997.3 Neither party disputes that United States copyright law applies to thiscase because, even though the alleged transactions took place in Spain, thecopyrights involved are United States copyrights.4 The copyright laws define a "transfer of copyright ownership" as an"assignment, mortgage, exclusive license, or any other conveyance, alien-ation, or hypothecation of a copyright or of any of the exclusive rightscomprised in a copyright . . . but not including a nonexclusive license."17 U.S.C. S 101. Television Espanola claims that it was granted an exclu-sive license and does not claim that it has a nonexclusive license; thus, thetransaction forming the basis of this lawsuit falls within the definition of"transfer of copyright ownership."5 The phrase "the deal for that " was inserted by the translator to makesense of the Spanish original that just stated that "New World decidio cer-rar la animacion con TVE." Translated without the inserted phrase, thatmeans that "New World decided to close the animation with TVE."6 Television Espanola does not and cannot rely on these two extra docu-ments individually. First, New World's internal deal memo cannot satisfyS 204(a) because it was never communicated to Television Espanola. SeeKonigsberg, 16 F.3d at 357 (indicating that whereas the common law stat-ute of frauds does not require the writing to be communicated to the otherparty, S 204(a) does). Second, the memo from Television Espanola detail-ing the proposed contract terms does not satisfyS 204(a) because it wasnot written and signed by New World, the owner of the copyright. See 17U.S.C. S 204(a) (stating that the transfer must be "in writing and signedby the owner of the rights conveyed or such owner's duly authorizedagent").7 As an alternative ground for summary judgment, the district court ruledthat there was no meeting of the minds necessary for the creation of acommon law contract granting an exclusive license to Television Espa-nola. That ruling may or may not be correct; however, for grants of exclu-sive licenses, any meeting of the minds must be accompanied by a writingsatisfying 17 U.S.C. S 204(a). Section 204(a) cannot be circumvented byparties arguing that the exclusive license was granted in a contract satisfy-ing state common law. See Valente-Kritzer, 881 F.2d at 774 ("Section204(a) not only bars copyright infringement actions but also breach ofcontract claims based on oral agreements."); accord Marshall v. New Kidson the Block Partnership, 780 F. Supp. 1005, 1009 (S.D.N.Y. 1991) (Toallow such an argument "would permit any alleged copyright infringer" toignore copyright laws "by making an [sic] bland allegation that use ofcopyrighted material was within the terms of an oral license agreement.");9 The procedure under Local Rule 14.10.5 is not required for actual writ-ten judgments by the court. Rather, the local rule only applies to memo-randum decisions, opinions and minute orders. At the time of this case, theCentral District Local Rule 14.4, entitled Judgment, stated as follows:"The judgment shall be set forth on a separate document as required byF.R.Civ.P. 58. The judgment shall follow, as nearly as possible, F.R.Civ.P.Official Forms No. 31 or No. 32." Thus, if the district court had merelyused a separate document which approximated Official Forms No. 31 orNo. 32 to order judgment, we could have avoided this entire inquiry andit would have been clear to the parties that judgment had been entered.10 Television Espanola claims that the minute order also contained astamp stating "THIS CONSTITUTES NOTICE OF ENTRY ASREQUIRED BY FRCP, RULE 77(d)" and that the stamp demonstratedthat the minute order was an entry of judgment. New World responds thatthe copy of the minute order it obtained from the court record did not con-tain that stamp and thus could not constitute notice. Our resolution of thecost issue below does not require us to address the issue of the effect ofa failure to notify under Federal Rule 77(d) on filing a bill of costs.11 The most recent cases in which this circuit has discussed whether aminute order constituted entry of judgment have no bearing on this casebecause they do not address entry of judgment within the context of theCentral District Local Rules. See Ingram v. Acands, Inc., 977 F.2d 1332,1338-39 (9th Cir. 1992) (finding minute order sufficient because the docu-ment stated it was an order, was signed by the clerk, was mailed to counseland entered on docket as an order); Carter v. Beverly Hills Sav. & LoanAss'n, 884 F.2d 1186, 1189-90 (9th Cir. 1989) (finding minute orderinsufficient because it was not "a separate order " because not signed bythe deputy clerk who prepared it, did not contain "order" language andwas not "entered as an order" on the docket); Beaudry Motor Co. v. AbkoProperties, Inc., 780 F.2d 751, 755 (9th Cir. 1986) (finding minute ordersufficient because it contained "order" language, signed by the clerk, con-tained file stamps, was mailed to the parties, and was entered as an orderon the docket); Calhoun v. United States, 647 F.2d 6, 9-10 (9th Cir. 1981)(finding minute order failed as a separate document, was not mailed to theparties and was not entered as an order). Even within the context of thosecases, the minute order here may not constitute entry of judgment becauseit was not entered as an order on the civil docket.12 Television Espanola's appeal was taken from the August 6th entry ofthe minute order. Because the August 6th entry of the minute order wasnot entry of judgment under the local rules, Television Espanola's appealwas premature. However, under our rules, the appeal is deemed as if filedon October 6th. See Fed. R. App. P. 4(a)(2) ("A notice of appeal filed afterthe court announces a decision or order but before the entry of judgmentor order is treated as filed on the date of and after the entry.").