Contractual Obligation Productions v. Amc Networks

• Decision Date: 25 March 2008
• Docket Number: No. 04 Civ. 2867(BSJ)(HBP).,04 Civ. 2867(BSJ)(HBP).
• Citation: 546 F.Supp.2d 120
• Parties: CONTRACTUAL OBLIGATION PRODUCTIONS, LLC, Plaintiff, v. AMC NETWORKS, INC., et al., Defendants.
• Court: U.S. District Court — Southern District of New York

546 F.Supp.2d 120

CONTRACTUAL OBLIGATION PRODUCTIONS, LLC, Plaintiff, v. AMC NETWORKS, INC., et al., Defendants.

No. 04 Civ. 2867(BSJ)(HBP).

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

March 25, 2008.

COPYRIGHT MATERIAL OMITTED

Joel D. Joseph, Bethesda, MD, Joseph Q. Kaufman, Costa Mesa, CA, Michael Freed Bayside, NY, Venus Soltan, Costa Mesa, CA, Noah L. Shube, Friedman & Shube, New York City, for Plaintiff.

Adam F. Streisand, Jean-Paul Jassy, Loeb and Loeb, Los Angeles, CA, Brian Roy Socolow, Eric Scott Manne, Loeb and Loeb, New York City, Orit H. Michiel, Loeb & Loeb, Los Angeles, CA, for Defendants.

OPINION AND ORDER

PITMAN, United States Magistrate Judge.

I. Introduction

Plaintiff commenced this action against defendants Cablevision Systems Corporation ("Cablevision"), Rainbow Media Holdings, Inc. ("Rainbow") and others alleging copyright and trademark infringement and various violations of California state law, including unfair business practices. By Order dated March 29, 2007 (Docket Item 46), the Honorable Barbara S. Jones, United States District Judge, granted summary judgment in favor of defendants on, inter alia, plaintiffs claims of copyright infringement, trademark infringement, and unfair competition.

By notice of motion dated April 13, 2007 (Docket Item 48), Cablevision and Rainbow move pursuant to Section 101 of the Copyright Act, 17 U.S.C. § 505, and Section 35(a) of the Lanham Act, 15 U.S.C. § 1117(a), for an order directing plaintiff to pay Cablevision and Rainbow the attorneys' fees and costs incurred in defending against plaintiffs copyright infringement, trademark infringement, and unfair competition claims.

II. Background

The facts giving rise to plaintiffs claims and the procedural history of this action are set forth in detail in Judge Jones' March 29, 2007 Order; familiarity with this Order is assumed. I shall set forth only those facts that are pertinent to the disposition of Cablevision and Rainbow's request for attorneys' fees.

A. Facts

In 2002 plaintiff began production of a television series for American Movie Classics Company LLC ("AMCC"). In February, 2003, plaintiff and AMCC executed a Certificate and Assignment ("Assignment") providing that plaintiff would create the series, then entitled, "What If," as a "work-made-for-hire." The Assignment provides, in pertinent part:

[A]ll literary, artistic and other material of whatever kind or nature created, developed, furnished, submitted and/or written by Artists and all of the results and proceeds of Artist' services (the "Material") in connection with the television project currently entitled "WHAT IF" (the "Project"), were, or will be, written, created and/or rendered at AMCC's request during the course of Artists' employment with or engagement by AMCC and constitute or will constitute a "work-made-for-hire" as defined in the United States Copyright Act of 1976, as amended; the Material was specifically ordered or commissioned by AMCC for possible use in the Project; AMCC is and shall be the author of said "work-made-for-hire" and the owner of all rights in and to the Material throughout the universe, in perpetuity and in all languages, for all now known or hereafter existing uses, media, and forms, including, without limitation the copyrights herein and thereto (including all extension and renewals thereof). (Assignment, annexed as Exhibit 1 to the Declaration of Brian R. Socolow, executed April 13, 2007 ("Socolow Decl.")). Apparently problems developed between plaintiff and AMCC during the development of the first season of "What If," which had been renamed "The Wrong Coast,"¹ and none of the episodes developed for that season aired. AMCC subsequently developed a second season of "The Wrong Coast" independently of plaintiff, using the services of a Canadian production company (March 29, 2007 Order at 3-4).

B. Procedural History

On November 19, 2003, plaintiff initiated this action in the United States District Court for the Central District of California (Civil Cover Sheet, annexed as Exhibit 3 to Socolow Decl.). Plaintiff asserted seven claims (1) copyright infringement, (2) trademark infringement, (3) unfair business practices in violation of California Business and Professions Code §§ 17200 et seq., (4) breach of contract, quasi-contract, quantum meruit and promissory estoppel, (5) fraud, (6) intentional interference with business relations, and (7) slander (Plaintiff's Verified Complaint ("Compl."), annexed as Exhibit 2 to Socolow Decl, at ¶¶ 111-57).

Plaintiffs copyright claim alleged that "[d]efendants' intentionally infringed on. plaintiffs copyright by promoting and publishing plaintiffs material without authorization, without just compensation and without appropriate attribution" (Compl. ¶ 112). Plaintiff's trademark infringement claim alleged that Cablevision and Rainbow violated the Lanham Act by obtaining illegal subsidies from the Canadian government in anticipation of publishing "The Wrong Coast" on national cable television, incorrectly designating it as a Canadian series, and not giving plaintiff any credit (Compl. at ¶¶ 124-31). Plaintiff also alleged that Cablevision and Rainbow violated Section 17200 of California's Business and Professions Code by, inter alia, violating the Lanham Act (Compl. at ¶¶ 140-48).

Plaintiff moved for a preliminary injunction and Rainbow filed a motion to dismiss for improper venue. The Honorable Percy Anderson, United States District Judge for the Central District of California, denied plaintiffs motion for preliminary injunctive relief, finding that plaintiff was unlikely to succeed on the merits of either its copyright or trademark infringement claims. Judge Anderson concluded that, based on the Assignment, plaintiffs contribution to "The Wrong Coast" "was done as a `work-made-for-hire' and that AMCC is the author and owner" of that work (see Order Denying Motion for a Preliminary Injunction and Granting Motion to Transfer, dated' April 5, 2004 ("Anderson Order"), at 6-7, annexed as Exhibit 4 to Socolow Decl.). Judge Anderson also found that pursuant to the United States Supreme Court's holding in Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 123 S.Ct. 2041, 156 L.Ed.2d 18 (2003), plaintiffs trademark claim was not cognizable under the Lanham Act (Anderson Order at 6-7). Judge Anderson also ordered that the action be transferred to the Southern District of New York rather than dismissed for improper venue (Anderson Order at 7-9).

By Orders dated February 8, 2005 and May 9, 2005, I dismissed plaintiffs initial complaint with respect to AMC Network, Inc., AMCC, Inc., American Movie Classics Holding Corporation, Inc., Blueprint Entertainment (USA), Inc., Curious Pictures Cuppa Coffee and Moving Parts Productions for failure to serve the summons and complaint on those entities properly (Docket Item 11; Docket Item 12).

On June 14, 2005 plaintiff moved for leave to amend its complaint to, inter alia, assert claims of copyright infringement and trademark infringement against certain additional defendants. On March 31, 2006 I denied, with prejudice, plaintiffs request to add new defendants because (1) under the clear, unambiguous language Of the Assignment, plaintiff was not the owner of the work when the alleged infringement occurred and did not, therefore, have standing to bring a copyright claim, and (2) plaintiffs trademark infringement claim was foreclosed by the Supreme Court's ruling in Dastar that the Lanham Act does not apply to claims arising out of a failure to attribute or credit the origin of creative work (Memorandum Opinion and Order, Docket Item 36, at 8-12, 20-21, citing Dastar Corp. v. Twentieth Century Fox Film Corp., supra, 539 U.S. at 30-37, 123 S.Ct. 2041).

On March 29, 2007, Judge Jones granted summary judgment in favor of Cablevision and Rainbow on all remaining claims, holding that plaintiff lacked standing to bring its copyright claim because the Assignment "rendered all of Plaintiff's services `work-made-for-hire,' and designated AMCC as the `author' and owner of the work and proceeds therefrom" (March 29, 2007 Order at 7). Judge Jones also found that plaintiffs Lanham Act claim was foreclosed by Dastar, as was plaintiffs claim of unfair business, practices, the success of which relied on plaintiffs Lanham Act claim (March 29, 2007 Order at 10-11).

A number of discovery disputes arose through the course of plaintiffs action. On December 2, 2004 I granted Cablevision and Rainbow's request to quash plaintiffs subpoenas to two non-parties, which plaintiff did not serve on Cablevision and Rainbow until the day before the discovery deadline (Docket Item 8). On March 9, 2005 Cablevision and Rainbow requested an Order compelling plaintiff to produce several documents that Cablevision and Rainbow had repeatedly requested (Defendants Second Request for Production of Documents to Plaintiff, annexed as Exhibit 12 to Socolow Decl.). On June 24, 2005, I granted that request (Docket Item 16). As a result of plaintiffs failure to comply with the June 24, 2005 Order, Cablevision and Rainbow requested attorneys' fees, sanctions and an Order of Preclusion regarding (1) plaintiffs copyright claim based on the alleged substantial similarity between its work and the Canadian production of "The Wrong Coast;" (2) plaintiffs claims for damage to its reputation and (3) plaintiffs claim for damages concerning payments that plaintiff had made (Letter from Eric S. Manne to the Court, dated July 22, 2005, annexed as Exhibit 14 to Socolow Decl). After hearing oral argument on the matter on November 7, 2005, I awarded defendants $3,163.78 in attorneys' fees and costs, pursuant to Fed. R.Civ.P. 37(a), concerning their March 9, 2005 motion to compel, and I denied, without prejudice, defendants requests for fees with respect to the July 22, 2005 motion (Docket Item 29). I also denied the application for an Order of preclusion.

Cablevision and...