The opinion of the court was delivered by: LOUIS L. STANTON
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.
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, P 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. P 14.) Ercolani and Murray "scribbled" as they discussed the details of the costume. (Id. P 16.) Murray retained the scribbles until the costume was approved by the BBC but denied using them in the course of his work. (Id. P 17.)
According to Murray, he was "left with almost total design freedom" even after the meeting with Ercolani. (Id. P 20.) Ercolani supplied basic requirements (e.g., that the costume be pink and shiny), while Murray suggested important changes and refinements. (Id. P 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. P 23.) "Almost all of the suggestions," Murray claims, were made by him. (Id. P 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. PP 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 P 4.)
Shortly after the meeting with Freeman and Leggo, Ercolani met with Murray. She gave him a detailed design,
which he retained. (Id. PP 12-13.) Murray and Ercolani discussed the costume in great detail, (id. P 16) and talked on the phone several times to go over "further characteristics." (Id. P 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 P 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, P 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, P 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 P 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. PP 4, 6.)
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 ...