Murray v. British Broadcasting Corp.

• Citation: 81 F.3d 287
• Decision Date: 10 April 1996
• Docket Number: No. 626,D,626
• Parties: 1995 Copr.L.Dec. P 27,520, 38 U.S.P.Q.2d 1405 Dominic MURRAY, Plaintiff-Appellant, v. BRITISH BROADCASTING CORPORATION and BBC Lionheart Television International, Defendants-Appellees. ocket 95-7458.
• Court: United States Courts of Appeals. United States Court of Appeals (2nd Circuit)

Page 287

81 F.3d 287

1995 Copr.L.Dec. P 27,520, 38 U.S.P.Q.2d 1405

Dominic MURRAY, Plaintiff-Appellant, v. BRITISH BROADCASTING CORPORATION and BBC Lionheart Television International, Defendants-Appellees.

No. 626, Docket 95-7458.

United States Court of Appeals Second Circuit.

Argued Dec. 15, 1995.

Decided April 10, 1996.

Appeal from a judgment of the United States District Court for the Southern District of New York (Louis L. Stanton, Judge ) granting defendants' motion to dismiss the complaint on the ground of forum non conveniens. Murray's principal argument is that the case should not have been dismissed because contingent fee arrangements are not available in the United Kingdom.

John M. Schwartz, New York City, (Herzfeld & Rubin, Herbert Rubin, David B. Hamm, Noreen M. Giusti, of counsel), for Plaintiff-Appellant.

Roger L. Zissu, New York City (Weiss Dawid Fross Zelnick & Lehrman, Craig S. Mende, of counsel), for Defendants-Appellees.

Before: WINTER, WALKER and CABRANES, Circuit Judges.

WINTER, Circuit Judge:

Dominic Murray, a British national, appeals from Judge Stanton's dismissal of his complaint based on the doctrine of forum non conveniens. The action was brought against the British Broadcasting Corporation ("the BBC"), a corporation organized under the laws of the United Kingdom, and BBC Lionheart Television International ("Lionheart"), a Delaware corporation and wholly-owned subsidiary of the BBC. It asserted claims based on copyright infringement under both United States and English law, false designation of origin, and unfair competition. Murray's principal arguments on appeal are that forum non conveniens was misapplied either because the district court should have granted greater deference to his choice of forum or because a contingent fee arrangement is not available in the United Kingdom for this kind of litigation. Alternatively, Murray contends that the district court abused its discretion in weighing the various factors applicable under forum non conveniens doctrine. We affirm.

BACKGROUND

Murray is a self-employed designer and manufacturer of costumes and props in London, England. In July 1992, the BBC engaged Murray to produce a disguise costume for Noel Edmonds, the host of a BBC television program styled "Noel's House Party." The costume, named Mr. Blobby, was to be worn by Edmonds in order to surprise celebrity guests on the program. The British public began identifying Mr. Blobby as a character rather than a costume. As a consequence, the Mr. Blobby costume, now worn by an actor instead of Mr. Edmonds, has become an unexpected success and has been put to a wider use. In 1993, the BBC began authorizing and licensing products bearing the likeness of Mr. Blobby in the United Kingdom. According to Murray, he consulted with English counsel at that time concerning an action for infringement of his copyright in the Mr. Blobby costume. He allegedly declined to pursue his claim because he could neither pay the 100,000 to 200,000 pounds necessary to bring his case to trial nor post the security necessary to obtain a loan for that amount. In June 1994, the defendants brought Mr. Blobby to New York for his American debut at the International Licensing and Merchandising Conference and Exposition and began actively marketing Mr. Blobby in the United States. Shortly thereafter, Murray obtained American counsel under a contingent fee arrangement. This action ensued. Although it appears that no Mr. Blobby products have yet been produced for the American market, Murray has also filed suit against several alleged licensees, Murray v. The Beanstalk Group, et al., 95-Civ-5358 (S.D.N.Y. filed July 18, 1995), which is still pending in the Southern District. As noted, Judge Stanton dismissed the action against the BBC and Lionheart on the ground of forum non conveniens, Murray v. British Broadcasting Corp., 906 F.Supp. 858 (1995), and Murray brought this appeal.

DISCUSSION

1. Deference to Murray's Choice of Forum

The doctrine of forum non conveniens permits a court to "resist imposition upon its jurisdiction even when jurisdiction is authorized by the letter of a general venue statute," Gulf Oil Corp. v. Gilbert, 330 U.S. 501, 507, 67 S.Ct. 839, 842, 91 L.Ed. 1055 (1947), if dismissal would "best serve the convenience of the parties and the ends of justice." Koster v. (American) Lumbermens Mut. Casualty Co., 330 U.S. 518, 527, 67 S.Ct. 828, 833, 91 L.Ed. 1067 (1947). There is ordinarily a strong presumption in favor of the plaintiff's choice of forum, Piper Aircraft Co. v. Reyno, 454 U.S. 235, 255, 102 S.Ct. 252, 265, 70 L.Ed.2d 419 (1981); Gilbert, 330 U.S. at 508, 67 S.Ct. at 843 ("the plaintiff's choice of forum should rarely be disturbed"). Where a foreign plaintiff is concerned, however, its choice of forum is entitled to less deference, Piper Aircraft, 454 U.S. at 256, 102 S.Ct. at 266. The Supreme Court has emphasized that this rule is not based on a desire to disadvantage foreign plaintiffs but rather on a realistic prediction concerning the ultimate convenience of the forum:

[w]hen the home forum has been chosen, it is reasonable to assume that this choice is convenient. When the plaintiff is foreign, however, this assumption is much less reasonable. Because the central purpose of any forum non conveniens inquiry is to ensure that the trial is convenient, a foreign plaintiff's choice deserves less deference.

Id. at 255-56, 102 S.Ct. at 266 (footnote omitted). Nevertheless, some weight must still be given to a foreign plaintiff's choice of forum. R. Maganlal & Co. v. M.G. Chem. Co., 942 F.2d 164, 168 (2d Cir.1991). Indeed, we have cautioned that "this reduced weight is not an invitation to accord a foreign plaintiff's selection of an American forum no deference since dismissal for forum non conveniens is the exception rather than the rule." Id. (citations and internal quotation marks omitted and emphasis added)

Murray quarrels with neither the rule concerning foreign plaintiffs nor the reason underlying it. Instead, he argues that his choice of an American forum must, as a matter of law, be accorded the deference given domestic plaintiffs because of the Berne Convention for the Protection of Literary and Artistic Works, to which both the United States and the United Kingdom are signatories. This is a matter of law that we review de novo.

The Convention provides in pertinent part that "the extent of protection, as well as the means of redress afforded to the author to protect his rights, shall be governed exclusively by the laws of the country where protection is claimed." Berne Convention for the Protection of Literary and Artistic Works, Paris Text, July 24, 1971, Art. V p 2, S. TREATY DOC. NO. 27, 99th Cong., 2d Sess. 40 (1986), reprinted in 6 David Nimmer & Melville B. Nimmer, Nimmer on Copyright, Appendix 27-5 (1995) (emphasis added). Under the Berne Convention, Murray argues, he is deemed to be in the shoes of an American plaintiff and entitled to greater deference in his choice of forum than the district court believed. The principle set out in Article V, paragraph 2 of the Berne Convention is one of "national treatment," see Creative Technology, Ltd. v. Aztech Sys. Pte, 61 F.3d 696, 700 (9th Cir.1995), a choice-of-law rule mandating that the applicable law be the copyright law of the country in which the infringement occurred, not that of the country of which the author is a citizen or in which the work was first published. 3 Nimmer on Copyright § 17.05. Murray argues, in essence, that the principle of national treatment contained in the Berne Convention mandates procedural opportunities identical to those accorded American plaintiffs alleging copyright infringement. We disagree.

Murray relies on Irish Nat'l Ins. Co. v. Aer Lingus Teoranta, 739 F.2d 90 (2d Cir.1984), in which we held that the Treaty of Friendship, Commerce and Navigation between the United States and Ireland required the application of the same forum non conveniens standards to the Irish plaintiff as a court would have applied to a United States citizen. Id. at 91-92. However, we do not agree that Aer Lingus applies in the instant matter. The Treaty of Friendship, Commerce and Navigation between the United States and Ireland provided for "national treatment with respect to ... having access to the courts of justice." Id. at 91 (internal quotation marks and citation omitted). In contrast, the national treatment provision of the Berne Convention contains no such language. We are confident that the inclusion of the quoted language in the Treaty with Ireland was not superfluous, and its omission in the Berne Convention was no oversight. When drafters of international agreements seek to provide equal access to national courts, the long-established practice is to do so explicitly. The United States first concluded a treaty with such a provision in 1775, Robert R. Wilson, Access-to-Courts Provisions in United States Commercial Treaties, 47 Am. J. Int'l L. 20, 33 (1953), and explicit "access to courts" clauses appear regularly in treaties to which the United States is a signatory. Indeed, over a dozen treaties have included such language since 1990. ¹

History and practice thus teach that a principle of equal access must be explicitly adopted. In the absence of such an explicit provision in the Berne Convention, we cannot construe a simple declaration of "national treatment" to imply such a principle and to extend Aer Lingus and cases following it to this case. Compare Blanco v. Banco Indus. de Venezuela, S.A., 997 F.2d 974, 981 (2d Cir.1993) (no lesser presumption accorded to a foreign plaintiff's choice of forum "when a treaty with a foreign nation accords its nationals access to our courts equivalent to that provided American citizens"); Alcoa Steamship Co. v. M/V Nordic Regent, 654 F.2d 147, 153 n. 6 (2d Cir.) (in banc) (discussing "access to courts" and "no less favorable treatment" clauses in forum non...