Tang v. Hwang

• Decision Date: 13 July 1992
• Docket Number: Civ. A. No. 92-3016.
• Citation: 799 F. Supp. 499
• Parties: Hung TANG d/b/a Hyun Jin's Video v. Ho Yong HWANG d/b/a Ko Ba Woo Video, John Doe d/b/a Han A Rum Video, Kyung Park d/b/a Ga Go Pa Food Market, John Doe d/b/a Dan Kol Oriental Market, John Doe d/b/a Lotte Oriental Super Video, John Doe d/b/a Treon's Cut Rate, John Doe d/b/a Asian Food Market, John Doe d/b/a Koa Video.
• Court: U.S. District Court — Eastern District of Pennsylvania

799 F. Supp. 499

Hung TANG d/b/a Hyun Jin's Video v. Ho Yong HWANG d/b/a Ko Ba Woo Video, John Doe d/b/a Han A Rum Video, Kyung Park d/b/a Ga Go Pa Food Market, John Doe d/b/a Dan Kol Oriental Market, John Doe d/b/a Lotte Oriental Super Video, John Doe d/b/a Treon's Cut Rate, John Doe d/b/a Asian Food Market, John Doe d/b/a Koa Video.

Civ. A. No. 92-3016.

United States District Court, E.D. Pennsylvania.

July 13, 1992.

Frank Benasutti, Wynnewood, Pa., for plaintiff.

Kirk T. Karaszkiewicz, John V. Silverio, Eckert Seamans Cherin & Mellott, Philadelphia, Pa., for defendants.

MEMORANDUM

BARTLE, District Judge.

The plaintiff, Hung Jung Tang d/b/a as Hyun Jin's Video ("Tang"), has instituted suit against nine defendant retail video store owners¹ for copyright infringement under 17 U.S.C. § 101 et seq. Plaintiff contends that the defendants are copying, renting or selling video copies of Korean television shows in violation of Plaintiff's exclusive distribution rights. Before the Court is plaintiff's motion for a preliminary injunction and impoundment. The Court held a hearing and now makes the following findings of fact and conclusions of law pursuant to Rule 52 of the Federal Rules of Civil Procedure.²

Korean Broadcasting System ("KBS"), of Seoul, Korea, produces Korean language television shows for television broadcast in Korea. Munwha Broadcasting Company ("MBC") also produces shows for television broadcast in Korea. KBS and MBC have assigned to Korean Television Enterprises, Ltd. ("KTE"), a California corporation and wholly owned subsidiary of KBS, all rights to distribute Korean video programs in the United States.³ Dae Han Video Productions, Inc.⁴ ("Dae Han"), a New York corporation, is the exclusive licensee for home video distribution in the Eastern United States of Korean language video tapes owned by KTE. Dae Han, in turn, granted plaintiff Tang an exclusive sublicense to distribute the Korean language videos. The sublicense agreement grants Tang "the exclusive right to distribute, broadcast, copy, sell and rent" within the Commonwealth of Pennsylvania and southern New Jersey all the Korean Television Shows produced by KBS and MBC after January 31, 1992. Exclusive Sublicense Agreement dated May 9, 1990, ¶ 2.

Seoul Broadcasting System ("SBS") is also a production company and television network that produces television shows in the Republic of Korea. SBS entered into an agreement with SBS USA, Inc., a 100% owned subsidiary of SBS. By virtue of this agreement, Sae Young Yooh, President of SBS in Korea, gave Sang Yul Chun, the President of SBS USA, a power of attorney, among other things, to make any and all necessary decisions as to SBS USA, including distributing its videos in the United States. Power of Attorney dated November 1, 1991. Among Sang Yul Chun's powers is the power to submit copyright applications. In turn, Sang Yul Chun entered into a contract with Ja Hak Koo, the President of Seoul Video Production, which gave Ja Hak Koo the exclusive right to copy and sell the tapes of the SBS television programs in much of the United States. This agreement also provides both that SBS USA should register the Copyrights of the programs and provide Ja Hak Koo with the copies of the registrations and that Ja Hak Koo has the power to enforce the copyrights.

Ja Hak Koo, through Seoul Video Production, entered into an exclusive distributorship agreement with Tang. Seoul Video granted Tang "the exclusive rights to reproduction of video tapes ... and sell only in the territories of Pennsylvania, Southern New Jersey ... and three Korean stores in the State of Delaware." Distributor's Agreement, Exhibit 28, Section 3 (February 24, 1992).

Each week, KBS, MBC, and SBS, through their licensees, distribute in the United States videotapes of television shows recently broadcast in Korea.

Tang alleges, and defendants conceded at the recent court hearing, that they, without authorization from plaintiff, have copied, rented or sold and continue to copy, rent or sell, videotapes of KBS, MBC and SBS television shows in the territory in which plaintiff has an exclusive right. Tang maintains that this activity infringes his exclusive rights in the copyrights of the KBS, MBC and SBS tapes.

Prior to May 1, 1992, the defendants purchased from Tang the video tapes of Korean television shows produced by KBS, MBC, and SBS.⁵ Defendants thereupon rented or resold the tapes to consumers in the Korean community. At a meeting sometime in late April 1992, Tang advised defendants he was going to raise the sale price of the KBS and MBC videos. Since April 30, 1992, defendants have purchased and are purchasing KBS, MBC and SBS videos from sources outside Tang's territory. Defendants then copy, rent or sell these tapes within the Pennsylvania and South Jersey territory. Although the defendants have no dispute with respect to the sale terms of the SBS videos, Tang has refused to sell the SBS tapes to the defendants because of the dispute concerning the price of the KBS and MBC videos.

In order to prevail with a copyright infringement claim, plaintiff must establish two essential elements: (1) an exclusive ownership right in a valid, existing copyright,⁶ and (2) the copying or other use of the copyrighted work by the defendant without the plaintiff's approval. See Whelan Associates v. Jaslow Dental Laboratories, 797 F.2d 1222, 1231-32 (3d Cir.1986), cert. denied, 479 U.S. 1031, 107 S.Ct. 877, 93 L.Ed.2d 831 (1987); Major League Baseball Promotion v. Colour-Tex, 729 F.Supp. 1035, 1039 (D.N.J.1990) (citing Whelan). Here, there is no question that the defendants have in fact copied, rented or sold, without plaintiff's approval, the tapes which they have purchased from dealers other than Tang. Instead, the defendants contend Tang has no infringeable copyright interest in the Korean Television Show tapes and therefore cannot obtain relief against the defendants.

The Copyright Act, 17 U.S.C. § 501(b), provides

"the legal or beneficial owner of an exclusive right under a copyright is entitled ... to institute an action for any infringement of that particular right committed while he or she is the owner of it."

The owner of a copyright has exclusive rights, with limited exceptions not relevant here, to do and to authorize, among other things, the following:

(1) to reproduce the copyrighted works in copies or phonorecords; ...

(3) to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending....

17 U.S.C. § 106.

The exclusive rights found in 17 U.S.C. § 106 are separate and distinct and severable from one another; any of these rights can be transferred and owned separately. 17 U.S.C. § 201(d).⁷ The grant of one does not waive any of the other exclusive rights. Columbia Pictures Industries v. Redd Horne, 749 F.2d 154, 158 (3d Cir.1984). The owner of a particular exclusive right is a "copyright owner" with respect to that particular right. 17 U.S.C. § 101; H.Rep. No. 94-1476, 94th Cong., 2d Sess. 123 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5739. Transfer of exclusive rights, through a license for example, by the holder of a copyright entitles the licensee, to the extent of any particular exclusive right it acquired, to all of the protections and remedies accorded to a copyright owner by the Copyright Act. 17 U.S.C. § 201(d)(2); Wales Indus., Inc. v. Hasbro Bradley, Inc., 612 F.Supp. 510 (S.D.N.Y.1985). This includes the right to sue to protect its particular rights against alleged infringers. See Hubbard Broadcasting v. Southern Satellite Systems, 593 F.Supp. 808, 811 (D.Minn.1984), affirmed, 777 F.2d 393 (8th Cir.1985).

Holding an exclusive right, however, is not by itself sufficient to bring an action under the Copyright Act. Under 17 U.S.C. § 411(a), "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."⁸ This has been broadly construed to allow for the commencement of an infringement action upon the Copyright Office's receipt of the application, the required numbers of copies of the work, and the filing fee in proper form. 17 U.S.C. § 410(d)⁹; Apple Barrel Prod., Inc. v. Beard, 730 F.2d 384 (5th Cir.1984); Sebastian Int'l Inc. v. Consumer Contact Ltd., 664 F.Supp. 909, 912 (D.N.J.1987). Thus, the registration or the application for copyright registration together with the requisite copies and payment of the filing fee is a jurisdictional prerequisite to a suit for infringement.

Tang must demonstrate that he has an ownership interest in the valid copyright and either that copyright registrations have been issued or, at least, that applications for copyright registrations on the Korean video tapes, together with the required copies and filing fees, have been submitted to the Copyright Office prior to the institution of the infringement action.

Where the plaintiff is not the author of the copyrighted work he or she must establish a proprietary right through the chain of title in order to support a valid claim to the copyright. Motta v. Samuel Weiser, Inc., 768 F.2d 481, 484 (1st Cir.), cert. denied 474 U.S. 1033, 106 S.Ct. 596, 88 L.Ed.2d 575 (1985) (cites omitted).¹⁰ Tang contends he was granted exclusive rights under the Copyright Act to the KBS and MBC tapes and may enforce those rights by bringing an action against alleged infringers of his exclusive rights. The language in the agreement between Dae Han and Tang supports this contention. Dae Han granted Tang "exclusive rights to distribute, broadcast, copy, sell and rent" the KBS and MBC videos. The rights to reproduce and distribute a work are exclusive rights of a copyright holder under the Copyright Act. 17 U.S.C. § 106(1) and (3). Therefore, Tang does have exclusive rights which may be protected from infringement under the copyright laws. See Hubbard Broadcasting v. Southern...