Court Denies Comity to Conflicting Foreign Decisions

In a March 20, 2015 ruling, Judge Kimba M. Wood, in dismissing the plaintiff’s preliminary injunction motion, declined to grant comity to a decision of a French court about the ownership of the copyright at issue in light of another conflicting French decision. Judge Wood ruled that “[b]ecause the copyright analyses in [the two French cases] are irreconcilable on this potentially critical point, and both foreign litigations remain active and apparently independent, the Court concludes, in its discretion, that it would be premature to afford comity to either holding.” The Court thus dismissed the motion with leave for the plaintiff to refile it at any time.

Court Dismisses Copyright Declaratory Judgment Action Finding No “Actual Controversy”

In an April 21, 2014 ruling, Judge Valerie Caproni dismissed the plaintiff’s declaratory judgment action seeking ownership of the copyright in certain computer code, finding that there is no “‘case or controversy’ for the purposes of Article III of the United States Constitution.” The Court first found that there is subject matter jurisdiction because the “Complaint appears to reflect a dispute between the parties over whether and, if so, how the ‘work for hire’ doctrine applies.” Judge Caproni nevertheless dismissed the case because there was no “actual controversy” between the parties, finding that regardless “of this lawsuit, [the plaintiff] can exercise ownership rights unencumbered by [the defendant] and without fear of legal action for anything other than delivery of allegedly non-conforming goods – a suit that has already been filed in New York state court.” The Court also denied an award of attorneys’ fees to the defendant, finding that “both parties bear the blame” for litigating the case.

Court Denies Reconsideration of Motion to Compel Settlement-Related Documents

In an October 11, 2013 ruling, Judge Denny Chin, sitting by designation, denied reconsideration of plaintiff the American Society of Media Photographers, Inc.'s motion to compel production of documents listed on defendant Google, Inc.'s privilege log.  Judge Chin rejected the argument that their inclusion on the log demonstrated their relevance, writing that "the inclusion of documents merely means that they are responsive to the request for the production of documents, not that they are relevant or are reasonably calculated to lead to admissible evidence."  The Court also noted that the plaintiff also failed to explain how documents relating to Google's settlement talks with another party are relevant, ruling that  if "defendant expressed its view as to its fair use defense in settlement discussions, those statements are not relevant or, even assuming some relevance, they are not admissible."

Court Grants Copyright Ownership to the Plaintiff and Awards Attorneys' Fees

In a September 30, 2013 ruling, Judge Richard J. Sullivan granted summary judgment and attorneys' fees to plaintiff 16 Casa Duse, LLC in its copyright declaratory judgment action against defendant Alex Merkin over the ownership of the copyright in the short film entitled "Heads Up."  The plaintiff purchased all rights to the screenplay for the film, and then assembled a cast and crew.  Every member of the cast and crew, except Merkin, the director, signed agreements specifically assigning all intellectual property rights to the plaintiff.  After a director's cut of the film had been completed, a dispute about copyright ownership developed between the plaintiff and Merkin.  When the parties' relationship completely broke down, Merkin obtained a copyright registration in the director's cut of the film, listing his authorship as "direction/director."  Plaintiff commenced this action, and its amended complaint asserted, among other claims, declaratory judgments that the plaintiff is not liable for copyright infringement and that Merkin has no ownership in any copyright to the film, and to invalidate Merkin's registration.  Merkin counterclaimed with various declaratory judgment claims relating to the copyright issues.  Both parties moved for summary judgment.

Judge Sullivan easily disposed of the plaintiff's claim of non-liability for copyright infringement, ruling that the plaintiff was -- at the very least -- a joint author of the work, so the plaintiff could not "be liable for copyright infringement because co-authors each own an undivided interest in the work." 

The Court next considered whether the plaintiff was the sole or co-author of the work under the Second Circuit's two-pronged test which looks at whether "'each of the putative co-authors (1) made independently copyrightable contributions to the work; and (2) fully intended to be co-authors.'"  Regarding the first prong, Judge Sullivan found that the plaintiff did "not contest that Merkin made independently copyrightable contributions to the Film."  Judge Sullivan, however, strongly found against Merkin on the second prong, finding that "the record uniformly establishes that Plaintiff, through its principal, . . . never intended to share authorship of the film with Merkin or anyone else." 

The Court concluded the plaintiff "is entitled to a declaratory judgment that Merkin holds no copyright ownership interest in the Film."  Judge Sullivan rejected Merkin's counterclaims based largely on the conclusion that Merkin has no copyright interest in the film, and likewise invalidated Merkin's registration in the director's cut to the film that Merkin had obtained.

Interlocutory Appeal Denied in Copyright Action

In a June 21, 2013 ruling, Judge Richard Sullivan denied defendant Redigi Inc.'s motion to certify an interlocutory appeal of Judge Sullivan's grant of partial summary judgment on plaintiff Capitol Records LLC's copyright claim. After first noting that Redigi's three month delay in filing the motion weighs against the request, the Court found that the issue Redigi intended to appeal -- whether Redigi violated Capitol's exclusive right of reproduction and distribution -- was no a "'controlling' question of law," nor "a matter of pure law." In denying the motion, Judge Sullivan also found that the intended appellate issue was not "an ephemeral matter" needing immediate review, and noted that the issue "will not escape review at the conclusion of this litigation."

Copyright Reasonable Royalty Damages Not Available for Breach of Contract Claim

In a June 17, 2013 ruling, Judge Katherine B. Forrest dismissed plaintiff Jill Stuart (Asia) LLC’s remaining breach of contract claim against Sanei International Co., Ltd., finding that the plaintiff had not suffered any damages as a matter of law. The plaintiff had originally asserted claims for trademark infringement and dilution, unfair competition, copyright infringement and breach of contract. Judge Forrest dismissed all the claims except the breach of contract claim. The plaintiff then asserted that it had suffered two types of damages on the breach of contract claim, damages to its brand from the defendant’s use of the plaintiff’s copyrighted pattern, and for a reasonable royalty for the unauthorized use. In response to the defendant’s motion for summary judgment because of no compensable damages, Judge Forrest dismissed the claim. The Court ruled that the plaintiff had failed to raise a triable fact that it had been harmed because of the defendant’s unauthorized use. Judge Forrest also rejected the reasonable royalty claim, holding that the plaintiffs “point to no legal authority for their theory of ‘contractual copyright infringement’; rather, plaintiffs appear to attempt an end run around the Court’s . . . Order dismissing their copyright claims.”

Second Circuit Reverses Judge Forrest's Dismissal of Copyright Infringement Action Over Ghost Rider Comic Book Character

In a June 11, 2013 decision, the Second Circuit reversed Judge Katherine B. Forrest’s decision dismissing the plaintiff’s copyright infringement action over the comic book character Ghost Rider. Judge Forrest had held as a matter of law that the plaintiff had assigned any rights he retained in the renewal term of the Ghost Rider copyrights to the predecessor of a defendant. The Second Circuit disagreed, finding the relevant contract language to be ambiguous, thus precluding judgment as a matter of law. On appeal, the defendant argued that the Second Circuit could affirm Judge Forrest’s decision on the ground of the assignment of the renewal rights, but also argued that the plaintiff’s claim was barred by the three year copyright statute of limitations. As to the assignment of renewal rights, the Second Circuit applied “the ‘strong presumption against the conveyance of renewal rights,’” and concluded that “the district court erred in holding as a matter of law that” the plaintiff “had assigned his renewal rights . . . by signing the” agreement at issue. Regarding the statute of limitations defense, the Second Circuit held that an ownership claim accrues when there has been an “express repudiation” of ownership, and found that there are material issues of disputed fact as to when the defendant repudiated the plaintiff’s ownership claim, thus precluding summary judgment. The Second Circuit remanded the case for trial.

Copyright Infringement Action Dismissed for Lack of Subject Matter Jurisdiction after Judgment on the Merits

In a June 10, 2013 ruling, Judge Loretta A. Preska dismissed a copyright infringement action on the ground that the Court lacked subject matter jurisdiction after the plaintiff had already been awarded $100,000 for the defendants’ willful copyright infringement. The defendants moved to set aside the judgment under Fed. R. Civ. P. 60(b), contending “that newly discovered evidence shows that Plaintiff has no direct ownership interest in the copyrights over which it has sued because those rights are owned by subsidiaries of the Plaintiff who were never joined to the action.” The plaintiff conceded that it did not directly own the copyrights at issue, but that its wholly-owned subsidiaries did, which, the plaintiff argued was sufficient. Noting that lack “of standing of the party bringing suit would result in a lack of jurisdiction of the Court to hear the matter and would require a dismissal of the action,” Judge Preska found that there “is support from decisions in this circuit for the holding that a parent company lacks standing to bring claims on behalf of its subsidiary,” and dismissed the action.

Motion for Reconsideration on Attorneys' Fees Denied

In a June 4, 2013 ruling, Judge Richard Sullivan denied reconsideration of a $10,000 award of attorneys’ fees against a pro se copyright plaintiff.  The plaintiff had argued that reconsideration was warranted because the Court incorrectly applied the Visual Artists Rights Act (VARA) to the works at issue, and that the Court had erred in concluding that the plaintiff had intentionally manipulated certain images to make them appear more similar to images made by the defendant.  In denying reconsideration, Judge Sullivan noted “the upshot of the Court’s analysis of VARA was to reject one of Defendants’ arguments in favor of fees,” and that “there can be no question that Plaintiff did intentionally manipulate images to enhance alleged similarities between her work” and that of the defendant.