508 U.S. 49 (1993), 91-1043, Professional Real Estate Investors, Inc. v. Columbia Pictures Industries, Inc.

Docket Nº:No. 91-1043
Citation:508 U.S. 49, 113 S.Ct. 1920, 123 L.Ed.2d 611, 61 U.S.L.W. 4450
Party Name:Professional Real Estate Investors, Inc. v. Columbia Pictures Industries, Inc.
Case Date:May 03, 1993
Court:United States Supreme Court
 
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508 U.S. 49 (1993)

113 S.Ct. 1920, 123 L.Ed.2d 611, 61 U.S.L.W. 4450

Professional Real Estate Investors, Inc.

v.

Columbia Pictures Industries, Inc.

No. 91-1043

United States Supreme Court

May 3, 1993

Argued Nov. 2, 1992

CERTIORARI TO THE UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

Syllabus

Although those who petition government for redress are generally immune from antitrust liability, Eastern R. Presidents Conference v. Noerr Motor Freight Inc., 365 U.S. 127, such immunity is withheld when petitioning activity "ostensibly directed toward influencing governmental action, is a mere sham to cover . . . an attempt to interfere directly" with a competitor's business relationships, id. at 144. Petitioner resort hotel operators (collectively, PRE) rented videodiscs to guests for use with videodisc players located in each guest's room, and sought to develop a market for the sale of such players to other hotels. Respondent major motion picture studios (collectively, Columbia), which held copyrights to the motion pictures recorded on PRE's videodiscs and licensed the transmission of those motion pictures to hotel rooms, sued PRE for alleged copyright infringement. PRE counterclaimed, alleging that Columbia's copyright action was a mere sham that cloaked underlying acts of monopolization and conspiracy to restrain trade in violation of §§ 1 and 2 of the Sherman Act. The District Court granted summary judgment to PRE on the copyright claim, and the Court of Appeals affirmed. On remand, the District Court granted Columbia's motion for summary judgment on PRE's antitrust claims. Because Columbia had probable cause to bring the infringement action, the court reasoned, the action was no sham, and was entitled to Noerr immunity. The District Court also denied PRE's request for further discovery on Columbia's intent in bringing its action. The Court of Appeals affirmed. Noting that PRE's sole argument was that the lawsuit was a sham because Columbia did not honestly believe its infringement claim was meritorious, the court found that the existence of probable cause precluded the application of the sham exception as a matter of law, and rendered irrelevant any evidence of Columbia's subjective intent in bringing suit.

Held:

1. Litigation cannot be deprived of immunity as a sham unless it is objectively baseless. This Court's decisions establish that the legality of objectively reasonable petitioning "directed toward obtaining governmental

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action" is "not at all affected by any anticompetitive purpose [the actor] may have had." Id. at 140. Thus, neither Noerr immunity nor its sham exception turns on subjective intent alone. See, e.g., Allied Tube Conduit Corp. v. Indian Head, Inc., 486 U.S. 492, 503. Rather, to be a "sham," litigation must meet a two-part definition. First, the lawsuit must be objectively baseless in the sense that no reasonable litigant could realistically expect success on the merits. Only if challenged litigation is objectively meritless may a court examine the litigant's subjective motivation. Under this second part of the definition, a court should focus on whether the baseless suit conceals "an attempt to interfere directly" with a competitor's business relationships, Noerr, supra, 365 U.S. at 144, through the "use [of] the governmental process -- as opposed to the outcome of that process -- as an anticompetitive weapon," Columbia v. Omni Outdoor Advertising Inc., 499 U.S. 365, 380. This two-tiered process requires a plaintiff to disprove the challenged lawsuit's legal viability before the court will entertain evidence of the suit's economic viability. Pp. 55-61.

2. Because PRE failed to establish the objective prong of Noerr's sham exception, summary judgment was properly granted to Columbia. A finding that an antitrust defendant claiming Noerr immunity had probable cause to sue compels the conclusion that a [113 S.Ct. 1923] reasonable litigant in the defendant's position could realistically expect success on the merits of the challenged lawsuit. Here, the lower courts correctly found probable cause for Columbia's suit. Since there was no dispute over the predicate facts of the underlying legal proceedings -- Columbia had the exclusive right to show its copyrighted motion pictures publicly -- the court could decide probable cause as a matter of law. A court could reasonably conclude that Columbia's action was an objectively plausible effort to enforce rights, since, at the time the District Court entered summary judgment, there was no clear copyright law on videodisc rental activities; since Columbia might have won its copyright suit in two other Circuits; and since Columbia would have been entitled to press a novel claim, even in the absence of supporting authority, if a similarly situated reasonable litigant could have perceived some likelihood of success. Pp. 62-65.

3. The Court of Appeals properly refused PRE's request for further discovery on the economic circumstances of the underlying copyright litigation, because such matters were rendered irrelevant by the objective legal reasonableness of Columbia's infringement suit. Pp. 65-66.

944 F.2d 1525 (CA 9 1991), affirmed.

THOMAS, J., delivered the opinion of the Court, in which REHNQUIST, C.J., and WHITE, BLACKMUN, SCALIA, KENNEDY, and SOUTER, JJ., joined.

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SOUTER, J., filed a concurring opinion, post, p. 66. STEVENS, J., filed an opinion concurring in the judgment, in which O'CONNOR, J., joined, post, p. 67.

THOMAS, J., lead opinion

JUSTICE THOMAS delivered the opinion of the Court.

This case requires us to define the "sham" exception to the doctrine of antitrust immunity first identified in Eastern R. President Conference v. Noerr Motor Freight Inc., 365 U.S. 127 (1961), as that doctrine applies in the litigation context. Under the sham exception, activity "ostensibly directed toward influencing governmental action" does not qualify for Noerr immunity if it "is a mere sham to cover . . . an attempt to interfere directly with the business relationships of a competitor." Id. at 144. We hold that litigation cannot be deprived of immunity as a sham unless the litigation is objectively baseless. The Court of Appeals for the Ninth Circuit refused to characterize as sham a lawsuit that the antitrust defendant admittedly had probable cause to institute. We affirm.

I

Petitioners Professional Real Estate Investors, Inc., and Kenneth F. Irwin (collectively, PRE) operated La Mancha Private Club and Villas, a resort hotel in Palm Springs, California. Having installed videodisc players in the resort's hotel rooms and assembled a library of more than 200 motion picture titles, PRE rented videodiscs to guests for in-room

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viewing. PRE also sought to develop a market for the sale of videodisc players to other hotels wishing to offer in-room viewing of prerecorded material. Respondents, Columbia Pictures Industries, Inc., and seven other major motion picture studios (collectively, Columbia), held copyrights to the motion pictures recorded on the videodiscs that PRE purchased. Columbia also licensed the transmission of copyrighted motion pictures to hotel rooms through a wired cable system called Spectradyne. PRE therefore competed with Columbia not only for the viewing market at La Mancha, but also for the broader market for in-room entertainment services in hotels.

In 1983, Columbia sued PRE for alleged copyright infringement through the rental of videodiscs for viewing in hotel rooms. PRE counterclaimed, charging Columbia with violations of [113 S.Ct. 1924] §§ 1 and 2 of the Sherman Act, 26 Stat. 209, as amended, 15 U.S.C. §§ 1-2,[1] and various state law infractions. In particular, PRE alleged that Columbia's copyright action was a mere sham that cloaked underlying acts of monopolization and conspiracy to restrain trade.

The parties filed cross-motions for summary judgment on Columbia's copyright claim and postponed further discovery on PRE's antitrust counterclaims. Columbia did not dispute that PRE could freely sell or lease lawfully purchased videodiscs under the Copyright Act's "first sale" doctrine, see 17 U.S.C. § 109(a), and PRE conceded that the playing of videodiscs constituted "performance" of motion pictures, see 17 U.S.C. § 101 (1988 ed. and Supp. III). As a result, summary judgment depended solely on whether rental of videodiscs for in-room viewing infringed Columbia's exclusive right to

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"perform the copyrighted work[s] publicly." § 106(4). Ruling that such rental did not constitute public performance, the District Court entered summary judgment for PRE. 228 USPQ 743, 1986 WL 32729 (CD Cal.1986). The Court of Appeals affirmed on the grounds that a hotel room was not a "public place," and that PRE did not "transmit or otherwise communicate" Columbia's motion pictures. 866 F.2d 278 (CA9 1989). See 17 U.S.C. § 101 (1988 ed. and Supp. III).

On remand, Columbia sought summary judgment on PRE's antitrust claims, arguing that the original copyright infringement action was no sham, and was therefore entitled to immunity under Eastern R. Presidents Conference v. Noerr Motor Freight, Inc., supra. Reasoning that the infringement action "was clearly a legitimate effort and therefore not a sham," 1990-1 Trade Cases ¶ 68,971, p. 63,243, 1990 WL 56166 (CD Cal.1990), the District Court granted the motion:

It was clear from the manner in which the case was presented that [Columbia was] seeking and expecting a favorable judgment. Although I decided against [Columbia], the case was far from easy to resolve, and it was evident from the opinion affirming my order that the Court of Appeals had trouble with it as well. I find that there was probable cause for bringing the action, regardless of whether the issue was...

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