For more than four decades, Fenwick & West LLP has helped some of the world’s most recognized companies become, and remain, market leaders. From emerging enterprises to large public corporations, our clients are leaders in the technology, life sciences and cleantech sectors and are fundamentally changing the world through rapid innovation.  MORE >

Fenwick & West was founded in 1972 in the heart of Silicon Valley—before “Silicon Valley” existed—by four visionary lawyers who left a top-tier New York law firm to pursue their shared belief that technology would revolutionize the business world and to pioneer the legal work for those technological innovations. In order to be most effective, they decided they needed to move to a location close to primary research and technology development. These four attorneys opened their first office in downtown Palo Alto, and Fenwick became one of the first technology law firms in the world.  MORE >

From our founding in 1972, Fenwick has been committed to promoting diversity and inclusion both within our firm and throughout the legal profession. For almost four decades, the firm has actively promoted an open and inclusive work environment and committed significant resources towards improving our diversity efforts at every level.  MORE >

FLEX by Fenwick is the only service created by an AmLaw 100 firm that provides flexible and cost-effective solutions for interim in-house legal needs to high-growth companies.  MORE >

Fenwick & West handles significant cross-border legal and business issues for a wide range of technology and life sciences who operate internationally..  MORE >

At Fenwick, we are proud of our commitment to the community and to our culture of making a difference in the lives of individuals and organizations in the communities where we live and work. We recognize that providing legal services is not only an essential part of our professional responsibility, but also an excellent opportunity for our attorneys to gain valuable practical experience, learn new areas of the law and contribute to the community.  MORE >

Year after year, Fenwick & West is honored for excellence in the legal profession. Many of our attorneys are recognized as leaders in their respective fields, and our Corporate, Tax, Litigation and Intellectual Property Practice Groups consistently receive top national and international rankings, including:

  • Named Technology Group of the Year by Law360
  • Ranked #1 in the Americas for number of technology deals in 2015 by Mergermarket
  • Nearly 20 percent of Fenwick partners are ranked by Chambers
  • Consistently ranked among the top 10 law firms in the U.S. for diversity
  • Recognized as having top mentoring and pro bono programs by Euromoney


We take sustainability very seriously at Fenwick. Like many of our clients, we are adopting policies that reduce consumption and waste, and improve efficiency. By using technologies developed by a number of our cleantech clients, we are at the forefront of implementing sustainable policies and practices that minimize environmental impact. In fact, Fenwick has earned recognition in several areas as one of the top US law firms for implementing sustainable business practices.  MORE >

At Fenwick, we have a passion for excellence and innovation that mirrors our client base. Our firm is making revolutionary changes to the practice of law through substantial investments in proprietary technology tools and processes—allowing us to deliver best-in-class legal services more effectively.   MORE >

Mountain View Office
Silicon Valley Center
801 California Street
Mountain View, CA 94041

San Francisco Office
555 California Street
12th Floor
San Francisco, CA 94104

Seattle Office
1191 Second Avenue
10th Floor
Seattle, WA 98101

New York Office
1211 Avenue of the Americas
32nd Floor
New York, NY 10036

Shanghai Office
Unit 908, 9/F, Kerry Parkside Office
No. 1155 Fang Dian Road
Pudong New Area, Shanghai 201204
P.R. China
+86 21 8017 1200

Viability of 'Desny' Claim Based on Promise to Pay for Idea Use


On May 4, 2011, the Ninth Circuit, sitting en banc, confirmed that copyright law does not preempt implied-in-fact contract claims based on a bilateral expectation that the defendant would compensate the plaintiff for the use of his or her idea. Montz v. Pilgrim Films & Television, Inc., No. 08-56954, 2011 U.S. App. LEXIS 9099 (9th Cir. May 4, 2011). Further, it held there was no meaningful difference, for purposes of the preemption analysis, between a promise to pay for such use and a promise to enter into a partnership to share the proceeds derived from such use.

Background of the Case

As alleged in the The defendants moved to dismiss the complaint. The copyright claim was found to be sufficient. However, the district court (Judge Florence-Marie Cooper) dismissed the state law claims on the basis that they were preempted by Section 301(a) of the Copyright Act.

Plaintiffs later stipulated to the dismissal of the copyright claim and, with nothing left to adjudicate, the district court entered judgment in favor of the defendants. This appeal followed.

The Ninth Circuit's Decision

Initially the district court's dismissal of the state law claims was affirmed by a three-judge panel of the Ninth Circuit. For an analysis of the earlier three-judge panel's decision visit []. The Court subsequently agreed to rehear the matter en banc and, in a 7-4 decision, reversed the district court. It held that plaintiffs' state law claims were not preempted because they "assert[ed] rights that are qualitatively different from the rights protected by copyright... because they require proof of such an extra element." Slip op. at 5923-24.

The Court first decided that plaintiffs' claims fell within the scope of the subject matter of the Copyright Act, which it recognized "is broader than the protections it affords." Id. at 5922. Although copyright law ordinarily only protects the expression of ideas, by the time this case reached the Ninth Circuit the issues were limited to the use of the idea, alone, and not the exploitation of any particular expression of that idea. Nevertheless, because the idea had been fixed in a tangible medium of expression—the teleplays, videos and other materials provided by plaintiffs during the pitch sessions—this case fell within the scope of the Copyright Act.

Having answered that initial question in the affirmative, the Court then decided that plaintiffs' claims were not preempted by copyright law. Specifically, the plaintiffs had properly alleged a so-called "Desny claim." In 1956, the California Supreme Court in Desny v. Wilder, 299 P.2d 257 (1956), recognized that writers have an implied contractual right to receive compensation for materials submitted to producers when there was a mutual understanding that the writer would be compensated if the material was used. Later, the Ninth Circuit held that a Desny implied contract claim was not preempted in Grosso v. Miramax Film Corp., 383 F.3d 965 (9th Cir. 2004). As the Court explained in Grosso, "the contractual claim requires that there be an expectation on both sides that use of the idea requires compensation, and that such bilateral understanding of payment constitutes an additional element that transforms a claim from one asserting a right exclusively protected by federal copyright law, to a contractual claim that is not preempted by copyright law." Slip op. at 5917.

It is this "bilateral expectation" of compensation that provides the necessary extra element to insulate Desny­-type claims from preemption challenges. Moreover, the distinct focus of contract and copyright law underscores that the one does not necessarily subsume the other: contracts provide for personal rights between a limited number of parties, whereas copyright confers "a right against the world." Thus "[t]he rights protected under federal copyright law are not the same as the rights asserted in a Desny claim" (id. at 5924) and the purpose of the contract is to protect a plaintiff's "right[] to his ideas beyond those already protected by the Copyright Act." Id. at 5925 (internal citations omitted).

With respect to the breach of confidence claim, the Court also found it was not preempted. The extra element distinguishing that claim from ones preempted by the Copyright Act was the assertion that a duty of trust existed between the parties.


This decision confirms that creative concepts and ideas will not fall into the gap between the preemptive scope of copyright law and the protection conferred by the Copyright Act on concrete expressions of ideas and concepts. So long as writers and other creators can allege a mutual expectation that they would be paid or otherwise compensated in some manner for their ideas, they can bring contract based claims regardless of whether they can state a claim for copyright infringement. And while the bulk of cases addressing preemption and Desny-type claims have focused primarily on Hollywood, it is likely that this analysis will be applied in a wide range of fields where fixed, creative concepts are shared before a business relationship is formalized.

For further information, please contact:

Jennifer Lloyd Kelly, Partner, Litigation Group, 415.875.2426

Marybeth Milionis, Associate, Litigation Group, 415.875.2313

©2011 Fenwick & West LLP. All Rights Reserved.

The views expressed in this publication are solely those of the author, and do not necessarily reflect the views of Fenwick & West LLP or its clients. The content of the publication ("content") should not be regarded as advertising, solicitation, legal advice or any other advice on any particular matter. The publication of any content is not intended to create and does not constitute an attorney-client relationship between you and Fenwick & West LLP. You should not act or refrain from acting on the basis of any content included in the publication without seeking the appropriate legal or professional advice on the particular facts and circumstances at issue.​