Sinners & Saints, L.L.C. v. Noire Blanc Films, L.L.C., Civil Action No. 12–866.
| Decision Date | 29 March 2013 |
| Docket Number | Civil Action No. 12–866. |
| Parties | SINNERS AND SAINTS, L.L.C. v. NOIRE BLANC FILMS, L.L.C., et al. |
| Court | U.S. District Court — Eastern District of Louisiana |
OPINION TEXT STARTS HERE
Roy Hyrum Maughan, Jr., Namisha D. Patel, The Maughan Law Firm, Baton Rouge, LA, for Plaintiff.
Mary Ellen Roy, Dan Brian Zimmerman, Phelps Dunbar, LLP, New Orleans, LA, for Defendants.
ORDER AND REASONS
Before the Court are Defendants' Motion to Dismiss pursuant to Rule 12(b)(6), or alternatively, Rule 12(b)(1) or 12(b)(3)(Rec. Doc. 34), Plaintiff's Opposition to Defendants' Motion to Dismiss (Rec. Doc. 35), and Defendants' Reply (Rec. Doc. 38). Defendants' motion was set for hearing on the briefs on August 29, 2012 at 9:30 a.m. For reasons stated more fully below, the Court finds that Defendants' motion (Rec. Doc. 34) should be DENIED.
This controversy between Plaintiff, Sinners and Saints, LLC (“SS LLC”) and Defendants, Noire Blanc Films, LLC (“Noire Blanc”) and Anchor Bay Entertainment, LLC (“Anchor Bay”) (collectively “Defendants”) arises out of the filming and production of the motion picture Sinners and Saints in various locations throughout the United States, including Louisiana and California. On April 3, 2012, SS LLC filed the instant action against Noire Blanc and Anchor Bay. (Rec. Doc. 1) Plaintiff served Anchor Bay on April 5, 2012, and has not yet served Noire Blanc.1 (Rec. Docs. 4, 7) SS LLC asserts claims for copyright infringement under the Copyright Act, 17 U.S.C. § 101, etseq., claims for unfair competition and false designation under the Lanham Act, 15 U.S.C. §§ 1051– 1141, and claims for unfair trade practices, conversion, and an accounting under Louisiana law. (Supp. Compl., Rec. Doc. 32) SS LLC avers that the Court has original, exclusive jurisdiction over its copyright infringement and Lanham Act claims pursuant to 28 U.S.C. § 1338(a)2 and supplemental jurisdiction over its related state-law claims for unfair trade practices, conversion, and an accounting. (Supp. Compl., Rec. Doc. 32, p. 1, ¶ 2) SS LLC also avers that venue is proper in this Court pursuant to 28 U.S.C. § 1391(b),3 because the production services and production management for Sinners and Saints, which allegedly gave rise to SS LLC's action, occurred in the Eastern District of Louisiana. (Supp. Compl., Rec. Doc. 32, p. 1, ¶ 3)
Plaintiff, SS LLC, alleges that it is a Louisiana limited liability company (“LLC”) with its principal place of business in Louisiana, that Noire Blanc is a California LLC with its principal place of business in California, and that Anchor Bay is a Delaware LLC with its principal place of business in Michigan. (Supp. Compl., Rec. Doc. 32, p. 2, ¶¶ 4–6) SS LLC alleges that it “is, and at all times relevant to the matters alleged ... was engaged in the business of creating, producing, distributing, and marketing motion pictures intended for commercial exhibition and/or broadcast through various means.” (Supp. Compl., Rec. Doc. 32, p. 2, ¶ 7) SS LLC further alleges that in 2008, it was “engaged to provide production services and production management for the motion picture entitled Sinners and Saints.” (Supp. Compl., Rec. Doc. 32, p. 2, ¶ 8) SS LLC claims that it employed many of the above-the-line and below-the-line personnel and many of the actors and actresses who appeared in Sinners and Saints, including but not limited to, Tom Banks, the Director of Photography, Mark Clark, the Producer, and over thirty Sinners and Saints cast members. (Supp. Compl., Rec. Doc. 32, p. 2, ¶ 9) Plaintiff alleges that each of these personnel executed contracts for the work and/or services provided and that pursuant to agreements with these personnel, SS LLC obtained the exclusive rights to use each employee's name and likeness in connection with their work in Sinners and Saints and became the rightful owner of the results and proceeds of its employees' work. (Supp. Compl., Rec. Doc. 32, p. 2, ¶ 11)
SS LLC asserts that on June 7, 2012,4 it “properly filed a copyright application for the film Sinners and Saints, paid the requisite fees, received confirmation of the filing from the U.S. Copyright Office, and made a complete material deposit as evidenced by Exhibit 1.” (Supp. Compl., Rec. Doc. 32, p. 4, ¶ 13) Exhibit 1 to SS LLC's supplemental complaint reflects that on June 7, 2012, SS LLC registered its copyright claim for the motion picture Sinners and Saints excluding the “script/screenplay,” “pre-existing footage,” and “preexisting music,” but including “additional new footage,” “production as a motion picture,” and “contribution to pre-existing footage.” (Rec. Doc. 32–1)
SS LLC alleges that Noire Blanc knowingly and willfully incorporated the results and proceeds of SS LLC's employees' work in Sinners and Saints without authorization or written transfer of SS LLC's ownership of the results and proceeds of its employees' work and has infringed copyright to SS LLC's work by selling illegal and unauthorized copies of Sinners and Saints, containing the results and proceeds of SS LLC's employees' work. (Supp. Compl., Rec. Doc. 32, p. 4, ¶ 14) SS LLC further alleges that without obtaining SS LLC's consent, Noire Blanc and Anchor Bay “entered into an agreement whereby Anchor Bay agreed to be the exclusive manufacturer, distributor, and marketer of Sinners and Saints ” and that they are “currently manufacturing, distributing, and/or delivering Sinners and Saints through various other mediums.” (Supp. Compl., Rec. Doc. 32, p. 4, 16) SS LLC alleges that these activities are directly competitive with SS LLC's commercial plans and activities. According to SS LLC, through these activities, Noire Blanc and Anchor Bay engaged in copyright infringement. (Supp. Compl., Rec. Doc. 32, p. 6, ¶¶ 23–26) SS LLC also contends that Noire Blanc's alleged misappropriation of the results and proceeds of SS LLC's employees' work constituted conversion under Louisiana law. (Supp. Compl., Rec. Doc. 32, p. 7, ¶¶ 27–31) SS LLC also contends that Defendants' alleged conduct constitutes unlawful, unfair, and/or fraudulent business practice in violation of Louisiana law.5 (Supp. Compl., Rec. Doc. 32, p. 7–8, ¶¶ 32–36) SS LLC contends that on November 29, 2011, SS LLC's attorney sent Anchor Bay a cease and desist letter advising Anchor Bay of the conflict at issue and also notified Noire Blanc of the allegedly infringing activities. (Supp. Compl., Rec. Doc. 32, p. 4–5, ¶¶ 15, 18)
SS LLC contends that as a direct result of Noire Blanc and Anchor Bay's activities in manufacturing, distributing, and marketing Sinners and Saints, it has suffered and will suffer damage in the form of: (1) destruction of the commercial value of its property, (2) lost past and future revenues and profits, (3) injury to its business goodwill and its relationships with current and prospective customers, and (4) lost past and future opportunities to expand its business goodwill. (Supp. Compl., Rec. Doc. 32, pp. 5–6, ¶¶ 19–22, 25) SS LLC contends that it is entitled to the following relief: (1) an order enjoining Defendants, their officers, agents, employees, and all other persons acting in concert with them from manufacturing, advertising, producing, distributing, and placing Sinners and Saints on the market,6 (2) all past and future damages it has sustained or will sustain, including costs and attorneys fees, (3) an accounting of any gains, profits, or advantages Defendants obtained by their alleged acts of infringement, including advances, recoupable costs claimed, royalties, and income information as to all forms of “exploitation of Sinners and Saints.” (Supp. Compl., Rec. Doc. 32, pp. 6, 8 ¶¶ 24–25, 36, 40–41) SS LLC alleges that although Noire Blanc and Anchor Bay have received substantial amounts of money through the release and sale of the Sinners and Saints DVD containing the results and proceeds of SS LLC's employees' work, an accounting is necessary to determine the exact amount of money obtained. (Supp. Compl., Rec. Doc. 32, p. 8, ¶¶ 39–41)
On May 17, 2012, Noire Blanc and Anchor Bay filed their first motion to dismiss, arguing, inter alia, that SS LLC's copyright claims should be dismissed on the grounds that SS LLC had failed to allege registration of a copyright—a prerequisite to a copyright infringement claim.7 (Rec. Doc. 10) On June 14, 2012, SS LLC sought leave to file a supplemental complaint alleging registration of its copyright with the United States Copyright Office, which Defendants opposed. (Rec. Docs. 21, 27) On July 25, 2012, after a hearing, the Magistrate Judge granted SS LLC's motion, reserving to Defendants the right to supplement their first motion to dismiss. (Rec. Doc. 31) On August 10, 2012, a few days after this Court denied the Defendants' first motion to dismiss as moot in light of the filing of Plaintiff's supplemental complaint, Defendants filed the instant motion to dismiss pursuant to Rule12(b)(1) or 12(b)(3), or alternatively, Rule 12(b)(6). (Rec. Docs. 33, 34)
Defendants, Noire Blanc and Anchor Bay make the following arguments in their motion to dismiss:
First, Defendants argue that SS LLC's supplemental complaint should be dismissed pursuant to either Rule 12(b)(1) for lack of subject matter jurisdiction or Rule 12(b)(3) for improper venue, because SS LLC and Noire Blanc executed a Production Services Agreement (“PSA”) that contains an arbitration provision under which they agreed to arbitrate, rather than litigate their disputes.8 (Rec. Doc. 34–2, p. 3) Defendants have attached a copy of the PSA as an exhibit to their motion to dismiss. (PSA, Ex. 1 to Def.'s Mot. to Dismiss, Rec. Doc. 34–1) The PSA states that it “is dated as of January 20, 2008,” and is signed by Mark Clark (“Clark”), who is designated the “managing member” of SS LLC, and William Kaufman (“Kaufman”), who is designated the “managing member” of Noire Blanc. (PSA, Ex. 1 to Def.'s Mot. to Dismiss, Rec....
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