Murray v. British Broadcasting Corp.

• Decision Date: 03 April 1995
• Docket Number: No. 94 Civ. 6162 (LLS).,94 Civ. 6162 (LLS).
• Citation: 906 F. Supp. 858
• Parties: Dominic MURRAY, Plaintiff, v. BRITISH BROADCASTING CORP., et al., Defendants.
• Court: U.S. District Court — Southern District of New York

906 F. Supp. 858

Dominic MURRAY, Plaintiff, v. BRITISH BROADCASTING CORP., et al., Defendants.

No. 94 Civ. 6162 (LLS).

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

April 3, 1995.

COPYRIGHT MATERIAL OMITTED

Herzfeld & Rubin (John M. Schwartz, of counsel), New York City, for Plaintiff.

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

Memorandum and Order

STANTON, District Judge.

Plaintiff Dominic Murray sues 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, alleging copyright infringement, false designation of origin and state law unfair competition. Murray claims the BBC is licensing rights in a character whose costume Murray designed and copyrighted. He asserts copyright infringement claims under both United States and English law.

Defendants now move to dismiss the complaint on the ground of forum non conveniens.

BACKGROUND

Murray is a self-employed costume and props designer and maker who lives in England. In July 1992, the BBC engaged Murray to produce a costume for a character named Mr. Blobby, who was scheduled to appear on the BBC television show "Noel's House Party." (Declaration of Dominic Murray dated November 14, 1994, ¶ 2) hereinafter "Murray 11/94"

The parties disagree on the process by which the Mr. Blobby costume was designed and constructed. According to Murray, he provided the bulk of the creative input. After he accepted the commission, he and Venetia Ercolani, a BBC costume designer, met to discuss the costume. Ercolani told Murray that the producer of Noel's House Party wanted a "silly-looking pear-shaped costume" but did not bring any sketches to the meeting. (Id. ¶ 14.) Ercolani and Murray "scribbled" as they discussed the details of the costume. (Id. ¶ 16.) Murray retained the scribbles until the costume was approved by the BBC but denied using them in the course of his work. (Id. ¶ 17.)

According to Murray, he was "left with almost total design freedom" even after the meeting with Ercolani. (Id. ¶ 20.) Ercolani supplied basic requirements (e.g., that the costume be pink and shiny), while Murray suggested important changes and refinements. (Id. ¶ 18-19.) The "only suggestions Murray can remember being made by Ms. Ercollani sic rather than by him at this stage" were that the costume's head flip back and that it have eyelashes. (Id. ¶ 23.) "Almost all of the suggestions," Murray claims, were made by him. (Id. ¶ 25.)

After Murray "had already made the bulk of' the costume's body, Ercolani sent him a sketch showing "very little detail." The sketch "became the subject of jokes and mirth" in Murray's studio because it was so "unsuitable." Eventually, one of Murray's assistants used it for scrap paper, took it home and disposed of it. (Id. ¶¶ 32-34.)

According to Ercolani, Murray did not design the costume, but merely constructed it to the BBC's specifications, which were formulated before Murray was commissioned. Guy Freeman, the production manager for "Noel's House Party," asked Ercolani to design and construct a costume for Mr. Blobby. Freeman told her that Mr. Blobby would wear a "pear shaped costume with psychedelic colors." (Declaration of Venetia Anne Ercolani ¶ 4.)

Ercolani then engaged Murray to construct the costume. (Id. ¶ 6.) Before meeting with Murray, Ercolani met with Freeman and producer Mike Leggo to discuss the costume. (Id. ¶ 7.) They decided the costume should be shaped like a pear, made of pink shiny and rubbery fabric, covered with yellow round spots, and adorned with a bow tie. They also talked about the design of the hands, feet, eyes, lashes, and eyelids. (Id. ¶ 8.) After the meeting, Ercolani made notes and several colored drawings of the costume in her notebook. (Id. ¶ 10.)

Shortly after the meeting with Freeman and Leggo, Ercolani met with Murray. She gave him a detailed design drawing,¹ which he retained. (Id. ¶¶ 12-13.) Murray and Ercolani discussed the costume in great detail, (id. ¶ 16) and talked on the phone several times to go over "further characteristics." (Id. ¶ 17.) Murray constructed the costume in accordance with Ercolani's instructions and delivered it on July 23, 1994. (Id. 18.)

Although Murray cannot recall with certainty whether he received a purchase order from the BBC for the Mr. Blobby costume, he did not mark the purchase order number on the invoice he sent to the BBC, which was his usual practice when he received a purchase order. He cannot locate a copy of the purchase order in his files. (Murray 11/94 ¶ 22.)

The BBC's files, however, contain a copy of the purchase order pursuant to which it commissioned Murray to make the Mr. Blobby costume. The original purchase order, according to the BBC's head of litigation, would have been sent to Murray. (Declaration of Diana Adie dated December 12, 1994, ¶ 7) hereinafter "Adie 12/12" The purchase order contains a brief description of the work to be completed: "To make a children's monster `Mr. Blobby' pear shaped dome shaped head with mechanical workings for mouth unreadable top head and two sets of sleeves." The purchase order provides that the costume should be "painted pink with yellow spots." The conditions of order, which appear on the back of the purchase order, provide that the purchase order "shall operate and be construed in accordance with English law." (Defendants' Exh. P.)

Mr. Blobby became popular, and the BBC began licensing rights in it in England. (Affidavit of Michael Gury dated October 11, 1994, ¶ 5.) In June 1994, the BBC presented Mr. Blobby at the International Licensing and Merchandising Conference and Exposition in New York City. (Declaration of Paul A. Walsh ¶ 8.) Lionheart, which distributes rights originating in the BBC's programs, is still negotiating to license the rights to market Mr. Blobby in the United States and has not yet done so. (Gury Aff. ¶¶ 4, 6.)

DISCUSSION

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, 506, 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. Lumbermens Mut. Cas. Co., 330 U.S. 518, 527, 67 S.Ct. 828, 833, 91 L.Ed. 1067 (1947).

A. Available Alternative Forum

In deciding a motion to dismiss on the ground of forum non conveniens, a court must first determine whether an alternative forum is available. Gilbert, 330 U.S. at 507, 67 S.Ct. at 842. Defendants argue that England is an available alternative forum because the BBC is subject to process in England and Lionheart would consent to jurisdiction. According to Murray, a potential bond requirement and his inability to retain an attorney in England on a contingent-fee basis make England unavailable.

The requirement of an alternative forum is ordinarily satisfied if the defendant is amenable to process in the other jurisdiction, except "in rare circumstances" when "the remedy offered by the other forum is clearly unsatisfactory." Piper Aircraft Co. v. Reyno, 454 U.S. 235, 254 n. 22, 102 S.Ct. 252, 265 n. 22, 70 L.Ed.2d 419 (1981). For example, a forum is inadequate if it does not permit litigation of the subject matter of the dispute. Id.

Courts are divided on whether financial hardships facing the plaintiff in an alternative forum, such as the absence of a contingent-fee system, render that forum inadequate. Compare Coakes v. Arabian American Oil Co., 831 F.2d 572, 575 (5th Cir.1987) (plaintiff citing illegality of contingent-fee system "cannot actually argue that England is not an available, alternate forum" because defendant is amenable to process there); Lehman v. Humphrey Cayman, Ltd., 713 F.2d 339, 346 (8th Cir.1983), cert. denied, 464 U.S. 1042, 104 S.Ct. 708, 79 L.Ed.2d 172 (1984); Rudetsky v. O'Dowd, 660 F.Supp. 341, 346 (E.D.N.Y.1987) with McKrell v. Penta Hotels, 703 F.Supp. 13, 14 (S.D.N.Y. 1989) (denying motion to reject magistrate's report which concluded that alternative forum was not available because it had no contingent-fee system). The majority of courts consider the plaintiff's financial hardships as part of the private interest inquiry. Under that approach, England is an available alternative forum.

B. Gilbert Factors

Once the court has identified an alternative forum, it must balance the private interest and public interest factors to determine whether the convenience of the parties and the ends of justice would best be served by dismissing the action. See Gilbert, 330 U.S. at 508-09, 67 S.Ct. at 843.

1. Effect of the Berne Convention

Generally, a foreign plaintiff's choice of forum is entitled to less deference than that of a domestic plaintiff. Piper Aircraft, 454 U.S. at 256, 102 S.Ct. at 266. Murray argues that his choice is entitled to the deference accorded the choice of a domestic plaintiff because the Berne Convention, a copyright treaty to which both the United Kingdom and United States are parties, alters the forum non conveniens inquiry in copyright cases. He contends that the cases relied upon by defendants, which were decided before the United States acceded to the Berne Convention in 1989, ignore the principle of national treatment embodied in the Berne Convention.²

Murray argues, relying on Irish National Insurance Co. v. Aer Lingus Teoranta, 739 F.2d 90 (2nd Cir.1984), that the principle of national treatment increases the deference due a foreign copyright plaintiff's choice of forum. In Aer Lingus, the court held that the forum choice of an Irish plaintiff which sued an Irish defendant in a United States court was entitled to the same deference as a domestic plaintiff because a treaty between the U.S. and Ireland gave the plaintiff "`national treatment...