Gal v. Viacom Intern., Inc.

• Decision Date: 05 December 2005
• Docket Number: No. 05 Civ.0263 (CSH).,05 Civ.0263 (CSH).
• Citation: 403 F.Supp.2d 294
• Parties: Dalia GAL, f/k/a Dalia Gal-Ghelber, Plaintiff, v. VIACOM INTERNATIONAL, INC., Simon & Schuster, Inc., The Thomson Corporation, Thomson Gale, Inc., Thorndike Press, Simon & Schuster Audio, Inc., a division of Simon & Schuster, Inc., Pocket Books, Inc., a division of Simon & Schuster, Inc., and Mary Higgins Clark, Defendants.
• Court: U.S. District Court — Southern District of New York

403 F.Supp.2d 294

Dalia GAL, f/k/a Dalia Gal-Ghelber, Plaintiff, v. VIACOM INTERNATIONAL, INC., Simon & Schuster, Inc., The Thomson Corporation, Thomson Gale, Inc., Thorndike Press, Simon & Schuster Audio, Inc., a division of Simon & Schuster, Inc., Pocket Books, Inc., a division of Simon & Schuster, Inc., and Mary Higgins Clark, Defendants.

No. 05 Civ.0263 (CSH).

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

December 5, 2005.

COPYRIGHT MATERIAL OMITTED

Richard F. Horowitz, Heller, Horowitz & Feit, P.C., New York, NY, for Dalia Gal.

Marcia Beth Paul, David M. Ascher, Nyack, NY, for Viacom Intern., Inc., Simon & Schuster, Inc., Thomson Corp., Thomas Gale, Inc., Thorndike Press, Simon & Schuster Audio, Inc., Pocket Books, Inc., Div. of Simon & Schuster, Inc., Mary Higgins Clark.

MEMORANDUM OPINION AND ORDER

HAIGHT, Senior District Judge.

This is an action for copyright infringement under the Copyright Act of 1976, as amended, 17 U.S.C. § 101, et seq. Plaintiff Dalia Gal ("Gal" or "Plaintiff") alleges that, through the publication of a novel credited to Mary Higgins Clark, the above-named defendants ("Defendants") infringed Gal's copyright in a screenplay she had authored.

Currently, there are two motions pending before the court: (1) Defendants' motion to dismiss the amended complaint pursuant to Federal Rule of Civil Procedure 12(b)(6), based on the asserted lack of substantial similarity between the two works (in connection with this motion, Defendants ask to be awarded attorneys' fees and costs); and (2) Defendants' motion for sanctions against Plaintiff's counsel pursuant to Federal Rule of Civil Procedure 11.

For the following reasons, I deny Defendants' motion to dismiss, as well as their request for an award of attorneys' fees and costs, and I also deny Defendants' motion for sanctions.

I. BACKGROUND

Plaintiff, a professional writer, asserts that she is the author of, and has at all relevant times held a valid copyright in, a screenplay entitled Immortalin ("the Screenplay"). See Amended Complaint ¶¶ 3, 15-18. It is Plaintiff's contention that the novel The Second Time Around ("the Novel"), credited to Mary Higgins Clark and published or otherwise made available by the other named defendants in 2003, unlawfully infringes on the Screenplay, which was completed in the middle of 2000, by including "themes and scenes that were substantially similar to and directly copied from the themes and scenes in the [Screenplay]." Id. ¶ 22. Plaintiff cites several alleged examples of "selected, illustrative similarities" between the two works. Id. ¶ 23.

Plaintiff made these allegations and claims in her original complaint, filed January 11, 2005. In that original complaint, however, Plaintiff's counsel mistakenly referenced the copyright registration number of an older, substantially different version of the Screenplay.¹ See Affidavit of Marcia B. Paul, counsel for Defendants ("Paul Aff."), attached to Motion for Sanctions, ¶ 8. When, using the incorrect registration number supplied by Plaintiff, Defendants obtained a copy of what they believed was the relevant version of the Screenplay, Defendants were apparently (and rightfully) surprised to find that many of the alleged similarities between the two works did not exist, because the characters, scenes, or events described by Plaintiff's counsel in the complaint simply were not present in Plaintiff's work. Defendants notified Plaintiff's counsel of this fact by letter, and asked counsel to withdraw the (what appeared to be frivolous) complaint, based on the absence of any real similarity between the works. See id. ¶¶ 4-5.

Instead of investigating Defendants' claim that the instances of alleged similarity could not be found in Gal's work, Plaintiff's counsel simply maintained that the similarities existed, and asserted that the claim would be pressed on. See id. ¶ 6. Understandably, Defendants then moved to dismiss the complaint for failure to state a claim, since the similarities asserted by Plaintiff apparently did not exist between the two works. See id. ¶ 7. It was only after Defendants' motion to dismiss was filed that Plaintiff's counsel undertook an inquiry and discovered that a mistake in identification of the work had been made. See id. ¶ 8. Thereafter, the proper version of the Screenplay was copyrighted and provided to Defendants, and the complaint was amended accordingly. Defendants then moved to dismiss the amended complaint, asserting that, even considering the "correct" version of the Screenplay, Plaintiff was unable as a matter of law to show substantial similarity between the two works. See Motion to Dismiss Amended Complaint.

Further, based, inter alia, upon the failure of Plaintiff's counsel to correct the error in identifying the correct version of Gal's work, even when given notice that such was necessary, Defendants moved to have the Court impose sanctions against Plaintiff's counsel, pursuant to Federal Rule of Civil Procedure 11. Defendants ask that Plaintiff's counsel be ordered to pay all costs and attorneys' fees for time spent preparing the motion to dismiss. See Motion for Sanctions.

II. DISCUSSION

A. The Motion to Dismiss Pursuant to Rule 12(b)(6)

1. The Rule 12(b)(6) Standard of Review

The district court should grant a Rule 12(b)(6) motion "only if it is clear that no relief could be granted under any set of facts that could be proved consistent with the allegations." Hishon v. King & Spalding, 467 U.S. 69, 73, 104 S.Ct. 2229, 81 L.Ed.2d 59 (1984) (citing Conley v. Gibson, 355 U.S. 41, 45-46, 78 S.Ct. 99, 2 L.Ed.2d 80 (1957)). On a motion to dismiss, a district court must accept a plaintiff's well-pleaded factual allegations as true, Papasan v. Allain, 478 U.S. 265, 283, 106 S.Ct. 2932, 92 L.Ed.2d 209 (1986), and such factual allegations must be "construed favorably to the plaintiff," LaBounty v. Adler, 933 F.2d 121, 123 (2d Cir.1991) (citations omitted). "The review of such a motion is limited, and the issue is not whether a plaintiff will ultimately prevail but whether the claimant is entitled to offer evidence to support the claims. Recovery may appear remote and unlikely on the face of the pleading, but that is not the test for dismissal." Bernheim v. Litt, 79 F.3d 318, 321 (2d Cir.1996) (internal citations and quotation marks omitted).

2. Copyright Infringement

a) Basic Requirements

In order to prevail on an infringement claim, a plaintiff must prove "`(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.'" Williams v. Crichton, 84 F.3d 581, 587 (2d Cir.1996) (quoting Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991)). In the case at bar, Defendants do not challenge Gal's claim to a valid copyright in the Screenplay. See Defendants' Memorandum in Support of Motion to Dismiss at 3. Thus, the Court's focus is on the second requirement, that of copying.

The copying requirement can be broken down into two parts. As an initial matter, a plaintiff must first show that the defendant "actually copied" her work. See Boisson v. Banian, Ltd., 273 F.3d 262, 267 (2d Cir.2001) (citing Streetwise Maps, Inc. v. VanDam, Inc., 159 F.3d 739, 747 (2d Cir.1998)). Actual copying may be shown by either direct or indirect evidence. Id. (citing Laureyssens v. Idea Group, Inc., 964 F.2d 131, 140 (2d Cir.1992)). "Indirect evidence [of actual copying] may include proof of `access to the copyrighted work, similarities that are probative of copying between the works, and expert testimony.'" Id. (quoting Laureyssens, 964 F.2d at 140). "But not all copying results in copyright infringement." Id. at 268. A plaintiff must demonstrate "substantial similarity" between the defendant's work and the protectible elements of plaintiff's work. Id. (citations omitted).

In the case at bar, Plaintiff does not offer direct evidence of actual copying. As for indirect evidence, for the purpose of the motion to dismiss only Defendants concede their access to Plaintiff's work. The parties, however, do not seem to address the question of whether there are similarities "probative of copying between the works," Laureyssens, 964 F.2d at 140, instead focusing on whether the Screenplay and the Novel are substantially similar with regard to protectible material. In such a case, it seems reasonable for the Court to assume, for the purposes of the motion, that sufficient probative similarity exists to raise the inference of actual copying, and that, therefore, the Court's inquiry may focus on the "substantial similarity" requirement in the context of infringement. See Green v. Lindsey, 885 F.Supp. 469, 479 (S.D.N.Y.1992).

b) "Substantial Similarity"

(i) Comparison of the Works

In order to address the substantial similarity issue, the Court has undertaken its own review of the Novel and the Screenplay, as the works themselves are the best evidence of the presence or absence of substantial similarity, see Walker v. Time Life Films, 784 F.2d 44, 49 (2d Cir.1986) ("Each of the panel members has read the book and reviewed the film."), and supersede and control contrary descriptions of them, see id. at 52 (upholding district judge's decision not to view the voice-over version of film submitted by plaintiff).

The following is a significantly abridged description of the Novel and the Screenplay:

The Screenplay:

The Screenplay opens at a press conference, held at the Grand Hyatt hotel in Manhattan, where a large drug company announces the results of its new "miracle" anti-aging drug, called Immortalin. Involved in the presentation by the company are two scientist/doctors, David Baron and Fred Leary, and the CEO of the company, Robert MacGreal. The main character of the story, Alice Greene,² is at the conference as a reporter for the New York Report; she is accompanied by her photographer, Mitch DeCarlo. The drug company's presentation is interrupted by an irate man,...