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• 9TH CIRCUIT COURT

JAMES KODADEK,Plaintiff-Appellant,No. 97-55238v.D.C. No.MTV NETWORKS, INC., aCV-96-01429-DT (SHx)corporation; VIACOMINTERNATIONAL, INC., a                                OPINIONcorporation; MIKE JUDGE,Defendants-Appellees.

Appeal from the United States District Courtfor the Central District of CaliforniaDickran M. Tevrizian, District Judge, PresidingArgued and SubmittedMarch 4, 1998--Pasadena, CaliforniaFiled August 31, 1998Before: Melvin Brunetti, David R. Thompson, andThomas G. Nelson, Circuit Judges.Opinion by Judge Brunetti

_____________________________COUNSEL Amelia V. Vetrone, Haile & Simon, Los Angeles, California,for the plaintiff-appellant.Stephen A. Kroft, Sarah P. Trimble, McDermott, Will &Emery, Los Angeles, California, for the defendants-appellees.

_____________________________OPINION BRUNETTI, Circuit Judge:James Kodadek ("Kodadek") appeals the district court'sgrant of summary judgment in favor of MTV Networks, Inc.("MTV"), Viacom International, Inc. ("Viacom"), and MikeJudge. We have jurisdiction pursuant to 28 U.S.C.S 1291 andaffirm.I.Kodadek alleges that he made numerous drawings of twocartoon characters called "Beavis and Butthead " in Februaryor March of 1991 ("1991 drawings"). He claims that he gaveone of the drawings to a man who identified himself as MikeJudge. Kodadek asserts that he does not know what happenedto that drawing or to the remaining 1991 drawings.In 1993, Viacom's MTV network aired a television showentitled MTV's Beavis and Butthead, which featured two ani-mated characters that resembled Kodadek's alleged 1991drawings. The program gave creative credit to defendantMike Judge. After Kodadek learned of the program, he drewnew sketches of Beavis and Butthead ("1993 drawings") fromhis memory of the 1991 drawings.In 1995, Kodadek applied for and obtained a certificate ofregistration from the United States Copyright Office. Heattempted to comply with the registration deposit requirementof 17 U.S.C. S 408(b)(1) by depositing with the CopyrightOffice two of the 1993 drawings. In a portion of the Certifi-cate of Registration entitled "YEAR IN WHICH CREATIONOF THIS WORK WAS COMPLETED," Kodadek inserted"1991."Kodadek filed a complaint with the district court allegingcopyright infringement and unfair competition1 in February,1996. The complaint did not contain a demand for a jury trial.In August, 1996, Kodadek moved for leave to file an amendedcomplaint containing a jury demand. The district court deniedthe motion, ruling that he was not entitled to file a late jurydemand because the failure to make a timely jury demand wasdue solely to the inadvertence of his lawyer.The district court granted summary judgment in favor ofdefendants. Kodadek appeals. We review a grant of summaryjudgment de novo. Covey v. Hollydale Mobilehome Estates,116 F.3d 830, 834 (9th Cir. 1997).II.[1] "[N]o action for infringement of the copyright in anywork shall be instituted until registration of the copyrightclaim has been made. . . ." 17 U.S.C. S 411(a). Copyright reg-istration is not a prerequisite to a valid copyright, but it is aprerequisite to a suit based on a copyright. S.O.S., Inc. v. Pay-day, Inc., 886 F.2d 1081, 1085 (9th Cir. 1989).[2] In order to obtain a copyright registration, an applicantmust deposit as a part of his application a "copy " or "copies"of the work. 17 U.S.C. S 408(b)(1) and (2). We have statedthat the registration deposit requirement permits "bona fidecopies of the original work only. . . ." Seiler v. Lucasfilm,Ltd., 808 F.2d 1316, 1322 (9th Cir. 1987). We have notexpressly defined the characteristics of "bona fide copies,"but have distinguished them from "reconstructions." Id. In Seiler, Lee Seiler allegedly created and published sci-ence fiction creatures called Garthian Striders in 1976 and1977. Id. at 1317. In 1980, George Lucas released the movieThe Empire Strikes Back. Id. It contained battle scenes thatfeatured giant machines called Imperial Walkers. Id. at 1317-18. In 1981, in an effort to obtain a copyright registration,Seiler deposited with the Copyright Office not his originaldrawings, but later drawings depicting his Garthian Striders asthey had allegedly appeared in 1976 and 1977.2 Id. at 1318.Seiler then brought a copyright infringement claim, contend-ing that the Imperial Walkers were copied from his GarthianStriders. Id. at 1317-18.The district court held an evidentiary hearing regarding theadmissibility of the later drawings, or "reconstructions." Id. at1318. The court applied the Best Evidence Rule and foundthat Seiler lost or destroyed his original drawings in bad faithunder Fed. R. Evid. 1004(1). Id. Thus, the admission of sec-ondary evidence, such as the reconstructions that he depositedwith the Copyright Office, were inadmissible to prove thecontent of the original drawings. Id. The district court thengranted summary judgment in favor of Lucasfilm, Ltd. Id.This court affirmed, upholding the district court's applica-tion of the Best Evidence Rule. Id. at 1318-20. In addition, weheld that 17 U.S.C. S 410(c), which makes a "certificate ofregistration . . . prima facie evidence of the validity of thecopyright and of the facts stated in the certificate," did notapply. Id. at 1321-22. We so held for two independent rea-sons. Id. First, we held that any statements in the certificate per-tained not to the originals on which his copyright claim wasbased, but to the attached work. Attached were reconstruc-tions. Thus, evidence from the certificate was irrelevantunless Seiler could prove that the reconstructions were"virtually identical" to his originals, which he could not do.Kodadek urges that this holding mandates that he be given anopportunity to prove that his 1993 drawings are "virtuallyidentical" to his 1991 drawings. He contends that the districtcourt should have heard eyewitness testimony concerning theissue, and thus, summary judgment was improperly granted.Kodadek's argument neglects the second independent reasonthat S 410(c) was inapplicable in Seiler . Kodadek's witnessesmay have been able to establish that drawings were virtuallyidentical, thus making the evidence contained in the certifi-cate relevant, but, as we will explain, Kodadek never had avalid certificate to begin with.[3] Second, we held that:       The Copyright Act does not contemplate the copy-       righting of a now non-existent original on the basis       of a tendered reconstruction. Section 408 specifies       the types of material that must be deposited along       with an application for a certificate. The permissible       materials include bona fide copies of the original       work only; there is no mention of "reconstructions."       If it were otherwise, the possibilities for fraud would       be limitless.Id. at 1322. The court found that S 410(c) was not applicablebecause Seiler did not properly obtain a copyright registrationcovering his original drawings. Thus, Seiler's certificate ofregistration was not prima facie evidence of a valid copyright.[4] Here, Kodadek asserts that he was so familiar with his1991 drawings that he was able to draw virtually identicalcopies of them two years later from memory. While it may bepossible for an artist to accurately reproduce his or her previ-ous work from memory, for the purpose of certainty in obtain-ing copyright registration, such reproductions are simplyinsufficient. Again, Seiler held that S 408 permits the depositof "bona fide copies of the original work only. " Id. Thismeans that any "copy" deposited as part of an application fora certificate of copyright registration must be virtually identi-cal to the original and must have been produced by directlyreferring to the original. Once a bona fide copy is made in thismanner, subsequent copies can be made by directly referringto that copy. For example, a photocopy or other electronicmeans of reproduction of an original drawing could suffice.Similarly, an accurate trace of an original drawing could suf-fice. In fact, a meticulous freehand redrawing of an original,made while the artist referred directly to the original, couldsuffice. Here, Kodadek's 1993 drawings were made from hismemory of the 1991 drawings. They were not made bydirectly referring to the originals or bona fide copies of theoriginals. We hold that the 1993 drawings are merely"reconstructions" and not appropriate "copies" of the 1991drawings for purposes of obtaining a valid certificate of copy-right registration. Thus, Kodadek did not properly receive acopyright registration in the 1991 drawings and his infringe-ment action is foreclosed.III.Kodadek's complaint alleged unfair competition in viola-tion of California Business and Professions CodeS 17200 etseq. The district court granted summary judgment on theunfair competition claim on the merits and because it was pre-empted. We hold that the claim is preempted by the federalCopyright Act and need not reach the merits.[5] A state law cause of action is preempted by the Copy-right Act if two elements are present. First, the rights that aplaintiff asserts under state law must be "rights that areequivalent" to those protected by the Copyright Act. 17U.S.C. S 301(a); 1 Nimmer, S 1.01[B ] at 1-11. Second, thework involved must fall within the "subject matter" of theCopyright Act as set forth in 17 U.S.C. SS 102 and 103. Id.Unfair competition law in California prohibits any "unlaw-ful, unfair or fraudulent business practice." Barquis v. Mer-chants Collection Assn., 496 P.2d 817 (Cal. 1972); see 11Witkin, S 95 at 774-81 (1990). Thus, we must first examinethe nature of Kodadek's unfair competition claim to discernwhat rights Kodadek seeks to enforce with state law.Kodadek's complaint alleges that defendants "have beenpublishing and placing on the market for sale products bear-ing the images subject to the copyright ownership of theplaintiff and has thereby been engaging in unfair trade prac-tices and unfair competition against plaintiffs[sic] and toplaintiffs' [sic] irreparable damage." The unfair competitionclaim incorporates by reference paragraphs from the copy-right infringement claim. The paragraphs of consequence statethat defendants released a cartoon derived from his drawingswithout his authorization and released merchandise derivedfrom his drawings without his authorization.[6] Kodadek's complaint expressly bases his unfair compe-tition claim on rights granted by the Copyright Act. TheCopyright Act grants rights "to reproduce the copyrightedwork in copies," "to prepare derivative works based upon thecopyrighted work," "to distribute copies . . . to the public,"and "to display the copyrighted work publicly. " 17 U.S.C.S 106, Del Madera Properties v. Rhodes and Gardener, Inc.,820 F.2d 973, 977 (9th Cir. 1987) (overruled on othergrounds). Thus, it is clear that Kodadek's state law unfaircompetition claim is based solely on rights equivalent to thoseprotected by the federal copyright laws.[7] Kodadek seeks to protect his 1991 drawings. It is undis-puted that these drawings are "pictorial works " that can becopyrighted. 17 U.S.C. S 102(a)(5). Thus, the work that heseeks to protect is clearly a work that falls within the "subjectmatter" of the Copyright Act.[8] Thus, both prongs of the preemption analysis are met,and Kodadek's unfair competition claim is preempted. See 1Nimmer, S 1.01[B][1][e] at 1-24, n. 110 (stating that if B isselling B's products and representing to the public that theyare B's products, a claim by A that B's products replicate A'sis a disguised copyright infringement claim and is pre-empted); see also Xerox Corp. v. Apple Computer, Inc., 734F. Supp. 1542, 1550-51 (N.D. Cal. 1990).IV.[9] Accordingly, we uphold the district court's grant ofsummary judgment in favor of defendants. Because summaryjudgment was appropriate, we need not address Kodadek'sargument that the district court erred by denying his motionto amend his complaint to add a request for a jury trial.AFFIRMED. the end

___________________________FOOTNOTES 1 The unfair competition claim is based on purported violations of Cali-fornia Business & Professions Code S 17200 et seq.2 It is unclear in the opinion exactly when Seiler made the later draw-ings.