Agee v. Paramount Communications, Inc., 93 Civ. 6348 (CBM).

• Decision Date: 03 June 1994
• Docket Number: No. 93 Civ. 6348 (CBM).,93 Civ. 6348 (CBM).
• Citation: 853 F. Supp. 778
• Parties: Michael L. AGEE, Plaintiff, v. PARAMOUNT COMMUNICATIONS, INC., et al., Defendants.
• Court: U.S. District Court — Southern District of New York

853 F. Supp. 778

Michael L. AGEE, Plaintiff, v. PARAMOUNT COMMUNICATIONS, INC., et al., Defendants.

No. 93 Civ. 6348 (CBM).

United States District Court, S.D. New York.

June 3, 1994.

COPYRIGHT MATERIAL OMITTED

John Walshe & Associates, John Walshe, New York City, for plaintiff.

Paul, Weiss, Rifkind, Wharton & Garrison, Arthur L. Liman and Leslie Gordon Fagen, New York City, for defendants.

MEMORANDUM OPINION

MOTLEY, District Judge.

Plaintiff Michael L. Agee ("Agee") has brought this copyright infringement action under the Federal Copyright Act, 17 U.S.C. § 101, et. seq. ("the Copyright Act"). This court has jurisdiction over this action based on 28 U.S.C. §§ 1331, 1338(a) and 1338(b). The complaint alleges that defendants Paramount Communications, Inc., Paramount Pictures, and Paramount Television Group (collectively referred to as "Paramount") and 108 owners of 129 television stations located throughout the United States ("TV defendants") infringed his sound recording copyrights in two Laurel & Hardy musical recordings in connection with their broadcast of the "Hard Copy" television program on February 16, 1993.

Defendants have moved for summary judgment and for dismissal of the complaint pursuant to Rules 12(b) and 56(b) of the Federal Rules of Civil Procedure. Plaintiff has cross-moved for the disqualification of defense counsel in their representation of the TV defendants. The court heard oral argument on plaintiff's disqualification motion on December 17, 1993 and defendants' summary judgment motion on January 28, 1994. For the reasons set forth below, plaintiff's motion is denied and defendants' motion is granted.

FACTS

Plaintiff Michael Agee, a California resident, is the owner of L & H Records, a music recording studio located in Garden Grove, California. Through L & H Records, Agee owns copyrights in two sound recordings, "Laurel and Hardy's Music Box" ("Music Box") and "Laurel and Hardy's Music Box—Volume Two" ("Music Box-Two"). The music was written by Ronnie Hazelhurst and was first published in 1986 and 1990. Plaintiff does not own the copyrights or the publishing rights to the music compositions. Comp. ¶¶ 3, 6.

Defendant Paramount Communications, Inc. is a Delaware corporation whose principal place of business is Los Angeles, California¹. Defendants Paramount Pictures and Paramount Television Group are divisions of Paramount Communications, Inc. Paramount Pictures produces the "Hard Copy" television program which is the subject of the instant action. Comp. ¶ 4.

"Hard Copy" is a daily, half-hour news magazine program produced and transmitted by Paramount to independently-owned and operated television stations over the country for broadcast each weekday. The program is created and produced in Los Angeles, California. Pursuant to a licensing agreement between Paramount and the television stations, each installment of "Hard Copy" is a single broadcast, transmitted by Paramount Pictures by satellite to all the local television stations for broadcast on the same day.² Comp. ¶ 9; Ex. A to the Affidavit of Richard A. Kurshner ("Kurshner Aff."), ¶ 3-7.

The essence of plaintiff's complaint centers on the February 16, 1993 "Hard Copy" broadcast. Plaintiff complains that defendants' unauthorized use of his sound recordings during the "Caught on Tape" segment of that broadcast infringed his sound recording copyrights in "Music Box" and "Music Box-Two." Comp. ¶ 10.

"Caught on Tape" is an occasional feature of "Hard Copy" that shows security camera videotapes of actual crimes while they are being committed. The "Caught on Tape" segment aired on February 16, 1993 showed two young men unsuccessfully attempting to burglarize a liquor store in Houston, Tx. The segment was approximately four minutes in length and was the first feature story of the broadcast. Portions of the songs "Ku-Ku" and "Cops" from "Music Box-Two" were used as background music to accompany the visual images. Comp. ¶¶ 10-11; Pl.'s Ex. A. Paramount claims that the compact disc containing plaintiff's sound recordings was purchased from a record store by an employee of Paramount Pictures. Kurshner Aff., ¶ 9-10.

The "Caught on Tape" segment was prerecorded on February 15, 1993. At that time, portions of the Laurel and Hardy songs were transferred onto the audio track of the segment. The "Caught on Tape" segment was integrated into "Hard Copy" on the day of broadcast and a brief portion of the segment was used during the opening credits of the program. A promotional commercial for the February 16 show was also produced on February 15 which contained twenty seconds of the "Caught on Tape" segment. The commercials were transmitted by satellite on February 15 and broadcast by the television stations prior to the February 16 broadcast. Kurshner Aff., ¶ 10.

Plaintiff alleges that the unauthorized use of his Laurel & Hardy sound recordings as theme music for the "Caught on Tape" segment of the February 16 edition of "Hard Copy" infringed his copyright. More specifically, Agee claims that Paramount "wilfully infringed his performances of his sound recording copyrights by purchasing copies of his audio recordings "Music Box" and "Music Box-Two" in a record store and copying and synchronizing, without authorization, the performances of the musical arrangements fixed in those recordings...." Comp. ¶ 10. Plaintiff additionally alleges that by adding his sound recordings to their audiovisual images, defendants "infringed his copyrights by preparing a derivative work" in violation of § 114(b)(2) of the Copyright Act. Pl.'s Memo. Opp. Def.'s Motion for Summ. J. and Dismissal at 1. As a result of "this unfair competition by defendants," plaintiff has allegedly suffered a "loss of goodwill affecting the future licensing value of the infringed songs." Comp. ¶ 35. Thus, plaintiff seeks compensatory and punitive damages and a permanent injunction preventing defendants from rebroadcasting the February 16 program and committing similar acts in the future.

Defendants, on the other hand, argue that plaintiff is not entitled to relief because their use of the sound recording did not infringe plaintiff's exclusive rights under the Copyright Act. Paramount claims that its use of the Laurel & Hardy sound recordings during the February 16 installment of "Hard Copy" constituted a "performance," which is an exclusive copyright not available to sound recording copyright owners under the Copyright Act. Def.'s Memo. Sup. Summ. J. at 2. Defendants also argue that their use of plaintiff's sound recordings as background music in the "Hard Copy" television program did not create a derivative work. For the reasons stated below, the court finds that plaintiff's complaint should be dismissed and defendants are entitled to summary judgment as a matter of law.

I. Plaintiff's Disqualification Motion

Before deciding the issues raised in defendants' summary judgment motion, it is first necessary to address plaintiff's application for the disqualification of defense counsel. Plaintiff requests that this court disqualify the law firm of Paul, Weiss, Rifkind, Wharton and Garrison ("Paul Weiss") from representing the TV defendants "because of their conflict in representing defendants with adverse positions." Declaration of John Walshe in Support of Pl.'s Mot. to Disqualify, ¶ 1. According to plaintiff, since "108 TV defendants did not choose defense counsel and had no input in that choice," there exists a "clear, unavoidable and insoluble conflict between the interests of the Paramount defendants ... and the rights of the TV defendants." Id.; Pl.'s Memo. Supp. Mot. to Disqualify Defendants' Counsel at 1.

Courts have long recognized the need to protect the integrity of the attorney-client relationship in circumstances where a perceived conflict of interest arises. See, Bonin v. California, 494 U.S. 1039, 1040, 110 S.Ct. 1506, 108 L.Ed.2d 641 (1990) (Marshall, J., dissenting) ("it is well established that the right to effective assistance of counsel carries with it a correlative right to representation that is free from conflicts of interest"); Board of Ed. of City of New York v. Nyquist, 590 F.2d 1241, 1246 (2d Cir.1979) (trial judges have the power to disqualify counsel where necessary to preserve the integrity of adversary actions before them). A conflict of interest between clients can potentially compromise a lawyer's duty to serve each client with undivided loyalty, as well as to deter the attorney from exercising independent, professional judgment on behalf of each client. Cinema 5, Ltd. v. Cinerama, Inc., 528 F.2d 1384, 1386 (2d Cir.1976).

Contrasted against the court's duty to protect the integrity of the trial proceeding, however, is its desire to respect the client's interest in selecting and retaining counsel. Generally, courts have expressed reluctance in granting disqualification motions because of their concerns regarding: (1) the "immediate adverse effect disqualification has on the client separated from his lawyer;" (2) "the desire to preserve, to the greatest extent possible, ... the individual's right to be represented by counsel of his or her choice;" and (3) "the awareness that disqualification motions are being made, with increasing frequency, with purely strategic purposes in mind." Vegetable Kingdom, Inc. v. Katzen, 653 F.Supp. 917, 921 (N.D.N.Y.1987) (citing Nyquist, 590 F.2d 1241, 1246 (2d Cir.1979); Hull v. Celanese Corp., 513 F.2d 568, 569 (2d Cir.1975)).

Giving full consideration to these competing interests, motions to disqualify counsel should be subjected to heightened scrutiny. Accordingly, the moving party bears a "heavy burden of proving the facts required for disqualification." Evans v. Artek Systems Corp., 715 F.2d 788, 794 (2d Cir.1983); Government of India v. Cook Industries, Inc., 569 F.2d 737, 739 (2d Cir. 1978).

The American Bar Association Model Code of Professional Responsibility ("Model Code") contains many disciplinary rules ...