Monster Communications v. Turner Broadcasting
| Decision Date | 03 September 1996 |
| Docket Number | No. 96 Civ. 6645(LAK).,96 Civ. 6645(LAK). |
| Citation | 935 F. Supp. 490 |
| Parties | MONSTER COMMUNICATIONS, INC., Plaintiff, v. TURNER BROADCASTING SYSTEM, INC., et al., Defendants. |
| Court | U.S. District Court — Southern District of New York |
Jerome R. Halperin, Kenneth D. Freundlich, Levy & Freundlich, L.L.P., New York City, for Plaintiff.
Sanford M. Goldman, Tom J. Ferber, Pryor, Cashman, Sherman & Flynn, New York City, for Defendants Turner Broadcasting System, Inc. and Turner Network Television.
For two decades, Muhammed Ali, born Cassius Clay, was the dominant public figure in the world of boxing as an Olympic gold medalist, professional contender, and heavyweight champion of the world three times. He was also an arresting personality and a controversial figure whose flamboyance, adherence to the Nation of Islam, conviction for draft evasion despite a claim of conscientious objector status, and ultimate vindication on the draft charge by a unanimous Supreme Court1 frequently made him a focus of public attention. It therefore is far from surprising that his life has become a subject of intense interest to film makers, the circumstances that gives rise to this case.
Plaintiff Monster Communications, Inc. ("Monster") made and owns an 84 minute motion picture called "When We Were Kings" ("Kings") which is scheduled for world theatrical release in October 1996. The film is an account of the 1974 heavyweight title fight between Ali and George Foreman that was held in Zaire and referred to by Ali and others as the "rumble in the jungle." It is a serious film, and it recently won a grand jury award at the Sundance Film Festival. Monster believes that "Kings" has a substantial chance of achieving great commercial and critical success.
The cloud on the horizon, from Monster's point of view, is a documentary called "Ali — The Whole Story" ("Story"), which is scheduled to premiere on Turner Network Television on Tuesday, September 3, 1996. Monster claims that Story infringes its copyright in film footage contained in Kings because Story contains a number of film clips, aggregating approximately between 41 seconds and two minutes, that appear in Kings and allegedly are owned by Monster.
On Friday, August 30, 1996, Monster brought this action against Turner and MA Projects ("MA"), said to be the licensor to Turner of certain footage used in Story, for copyright infringement. It sought a temporary restraining order and preliminary injunction restraining Turner from exhibiting or distributing any of the Zaire footage allegedly owned by plaintiff, relief which would preclude the broadcast of Story in its present form. The Court heard argument on the afternoon of August 30, 1996, at which time the parties agreed that the application for a temporary restraining order would be treated by the Court as the motion for a preliminary injunction. An evidentiary hearing was held on September 1, 1996 at which time the Court rendered a bench decision denying the motion but reserved the right to amplify and edit its remarks. This memorandum contains the Court's findings of fact and conclusions of law on the motion for a preliminary injunction thus edited and amended.
In order to obtain a preliminary injunction, the movant must show "(a) irreparable harm and (b) either (1) likelihood of success on the merits or (2) sufficiently serious questions going to the merits to make them a fair ground for litigation and a balance of hardships tipping decidedly toward the party requesting the preliminary relief." Jackson Dairy, Inc. v. H.P. Hood & Sons, Inc., 596 F.2d 70, 72 (2d Cir.1979).
The requirement of threatened irreparable harm is readily satisfied in this case. Infringement of a copyright is presumed to give rise to such harm. Fisher-Price, Inc. v. Well-Made Toy Mfg. Corp., 25 F.3d 119, 124 (2d Cir.1994). Moreover, if defendants are threatening to infringe copyrighted material owned by the plaintiff, the extent of the harm to the plaintiff could not readily be measured, a factor that traditionally constitutes irreparable harm.
Turner argues that Monster has delayed unduly in bringing this action and that its delay requires the conclusion that there is no threat of irreparable injury. While the precise effect of undue delay in seeking injunctive relief is not entirely clear,2 there is no need to determine that point here. The Court finds that Monster was not guilty of undue delay.
It appears that Monster has been aware of Turner's planned documentary, and of its possible use of footage claimed by Monster, since June. Despite several efforts, however, Monster was unable to obtain a copy of Turner's film until some time after August 22, 1996.3 Indeed, as late as last week, an attorney for MA advised Monster that none of Monster's footage was in the Turner film. (Freundlich Aff. ¶ 7) Monster acted promptly after learning that Turner had screened Story for the media on August 27, 1996. There was no undue delay.
Turner's delay argument turns on the fact that counsel for MA on July 8 offered to allow a representative of Monster to view the Turner film in MA's office on the condition that "during the viewing, the representative will be required to identify, by time code, any footage which you claim to be owned or copyright by Monster." (Def.Mem.Ex. B, at 2) Monster did not avail itself of this offer.
Had Monster been offered a realistic opportunity to compare the Turner film with the footage in which it claims copyright, there might be substance to Turner's delay argument. But the opportunity offered was not realistic. Kings is 84 minutes long, and Monster claims copyright, in addition, in several hundred hours of film relating to the Zaire fight. Story is 94 minutes long. Having viewed Kings and Story consecutively, the Court finds that it would be extraordinarily difficult, given the enormous number of film clips constituting each movie, to identify with precision, under the conditions proposed by MA, each clip in Story that appears also in Kings. It would be virtually impossible in such circumstances to identify each clip in Story which appears also in several hundred hours of other film claimed by plaintiff. What plaintiff realistically required was an opportunity to view repeatedly and compare all of the film in question. Whether intended as such or not, the limited opportunity offered by MA was conditioned sufficiently to justify Monster in treating it as a set up. Monster's declination of the offer, in circumstances in which it continually demanded a copy of the Turner film for study, did not constitute unreasonable delay.
Once Monster obtained a copy of Story last week, the dispute became more focused. At the commencement of this action, plaintiff claimed that there were twenty film clips in Story totaling two to three minutes in length that appear also in Kings. During the hearing on September 1, plaintiff indicated that it would not press this motion, although reserving its rights to seek other relief, with respect to three of the twenty clips.4 Turner edited three of the allegedly infringing clips out of Story before the hearing. It contends that four of the remaining fourteen allegedly infringing clips, which aggregate 16 seconds in Story, are not the same as plaintiff's footage in Kings and must have been taken by another photographer.5 It concedes that nine of the clips appear both in Kings and Story and that their aggregate duration in Story is 41 seconds. In consequence, it is clear for purposes of this motion that the Turner film contains between nine and fourteen clips that appear also in Kings and which aggregate a minimum of 41 seconds and perhaps as much as two minutes, although it seems likely that the aggregate duration is more like one minute.
Turner argues that Monster is unlikely to prevail for three reasons: (1) Monster has failed to present a copyright registration in the allegedly infringed film footage, which Turner argues is an absolute prerequisite to a suit for infringement; (2) the registration for Kings extends only to that film and not to the underlying footage; and (3) Story's use of the disputed footage is a fair use and de minimis.
Turner's first two points are interrelated. Section 411 of the Copyright Act of 1976, 17 U.S.C. § 411, provides, with exceptions not relevant here, that "no action for infringement of the copyright in any work shall be instituted until registration of the copyright claim has been made in accordance with this title." The only registration tendered by Monster is for Kings. Kings, Turner assumes, is a derivative work the copyright registration of which "extends only to the material contributed by the author of the work, as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material." 17 U.S.C. § 103(b). Turner maintains that Monster has failed to establish its ownership of a registered copyright in the preexisting material — the film footage used to make Kings — as distinguished from a copyright in Kings itself. Since the claim of infringement relates to the footage and not to the movie Kings, as a whole, Turner maintains that Monster has failed to satisfy a jurisdictional prerequisite to maintenance of this action. But it is not clear that Turner's argument is correct.
For one thing, at least one circuit appears to have held that registration is a prerequisite to a suit for statutory damages under the Copyright Act, but not to a suit for injunctive relief. Olan Mills, Inc. v. Linn Photo Co., 23 F.3d 1345, 1348-49 (8th Cir.1994). But see Novak v. National Broadcasting Co., Inc., 716 F.Supp. 745, 750 (S.D.N.Y.1989); Conan Properties, Inc. v. Mattel, Inc., 601 F.Supp. 1179, 1182 (S.D.N.Y.1984). For another, there is authority in this district holding that the registration of "a collective work satisfies the requirements of Section...
To continue reading
Request your trial
-
Fioranelli v. CBS Broad. Inc.
...that easily tip the scale in favor of fair use under the first factor." (Defs.’ Mem. 29 (quoting Monster Commc'ns, Inc. v. Turner Broad. Sys., Inc. , 935 F. Supp. 490, 493 (S.D.N.Y. 1996) ); see also id. at 17, 31.) Defendants, however, seem to misunderstand the meaning of comment, criticis......
-
Whyte Monkee Prods., LLC v. Netflix, Inc.
...few, too short, and too small in relation to the whole" to undercut any market for this material. Monster Commc'ns, Inc. v. Turner Broad. Sys., Inc. , 935 F. Supp. 490, 495 (S.D.N.Y. 1996). Potential purchasers of the Travis MM Funeral Ceremony video or clips from this video are unlikely to......
-
Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith
...photograph may claim the necessary originality to support a copyright." (quotation marks omitted)); Monster Commc'ns, Inc. v. Turner Broad. Sys., Inc., 935 F. Supp. 490, 494 (S.D.N.Y. 1996) (stating that "photographic images of actual people, places and events may be" copyrighted). The prot......
-
Richard Feiner & Co. v. H.R. Indus.
...to 6,500 per photograph. See Plaintiff's Ex. G. 14. HRI seeks the opposite result by citation to Monster Communications, Inc. v. Turner Broad. Sys., Inc., 935 F.Supp. 490 (S.D.N.Y.1996). There, the Court found that the "amount and substantiality" factor favored the alleged infringer where t......
-
WITHHOLDING INJUNCTIONS IN COPYRIGHT CASES: IMPACTS OF EBAY.
...an adequate remedy. See id. at 499-500 (Blackmun, J., dissenting). (75.) See, e.g., Monster Commc'ns, Inc. v. Turner Broad. Sys., Inc., 935 F. Supp. 490, 491, 496-97 (S.D.N.Y. 1996) (denying preliminary injunction to stop broadcast of documentary that included forty-one seconds to two minut......
-
Google book search: fair use or fairly useful infringement?
...the use likely affected the entire market for the use of the clips). (95.) See, e.g., Monster Comm., Inc. v. Turner Broad. Sys., Inc., 935 F.Supp. 490, 493-494, 496 (S.D.N.Y. 1996) (finding a commercial biography of Muhammad All a "combination of comment, criticism, scholarship, and researc......
-
Common Copyright Concerns Regarding the Use of Copyrighted Images on Client Website
...a news report on his death was determined to be an infringement. Compare Monster Communications, Inc. v. Turner Broadcasting Sys. Inc., 935 F. Supp. 490 (S.D. N.Y. 1996) with Roy Export Co. Estab. of Vaduz v. Columbia Broadcasting Sys, Inc., 672 F.2d 1095 (2d Cir. 1982). Similarly, making a......