here has no merit because there is no evidence that Feiner knew or should have known, prior to being informed by an HRS representative in January 1995, that Turner had failed to properly exercise its right to extend its distribution and usage licenses. See Woods v. Universal City Studios, 920 F. Supp. 62 (S.D.N.Y. 1996). Indeed, it is Turner's position that it had every intention of renewing its license, and in fact properly done so. Therefore, there is no basis for the suggestion that Feiner should have somehow known that Turner had not in fact renewed. From January 1995 until January 1996, Feiner's failure to file suit is explained by continuing settlement negotiations. Indeed, with the receipt of the January 22, 1996 letter acknowledging the withdrawal of the infringing material, Feiner had no reason to file a lawsuit because he understandably believed the matter to be resolved. He filed this action several weeks later, once he realized that the Laughing 20's was still available for sale. Under the circumstances, these few weeks do not constitute unreasonable delay.
Next, I turn to Feiner's likelihood of success on the merits. Turner argues that Feiner cannot establish a likelihood of success on the merits because Turner effectively exercised its renewal option. This argument is flawed. Turner contends that in order to exercise its option, it had only to notify Youngson in writing; written notice and payment to HRS were not required, for two reasons. First, in an addendum to the June 8, 1965 contract, HRS warranted that it had given Youngson the license to make the movie and enter into a distribution agreement and that HRS did so "without any restrictions of any kind or nature." Dunn Aff. Ex. 1 at IV 8-9. Turner interprets this clause to mean that HRS was extinguishing the conditions of renewal with respect to HRS. Such an artificial interpretation of this statement directly conflicts with HRS' later statement in the addendum that it "irrevocably approves, confirms and ratifies all of the terms, provisions and conditions contained in the said agreement. . . ." Id. (emphasis added). Rather, a fair reading of the HRS addendum to the June 1965 contract reveals that its purpose was to assure MGM that Youngson did in fact hold a valid use license for the underlying shorts.
Turner also relies on a February 7, 1978 release signed by Hal Roach, Sr. ("Roach release") resolving litigation between him and MGM over whether his name should have been listed in the credits of the Laughing 20's. The Roach release states that as far as Hal Roach Sr., his heirs, executors, or administrators and assigns were concerned, Youngson and MGM had "the full and complete right in perpetuum to use, distribute, exhibit, telecast, advertise and exploit . . . 'Laurel and Hardy's Laughing Twenties' . . . and any clips, or excerpts or portions from such motion picture, without any obligations to me, my heirs, executors, or administrators and assigns, of any kind or nature whatsoever . . . ." Ringler Aff. Ex. H. Turner contends that the Roach release relieved Turner of making any payment or giving any notice to HRS. This contention cannot stand. The Roach release cannot unbind HRS, a separate entity, from the rights and obligations undertaken by it as a signatory to a contract. The Roach release, not surprisingly, says nothing about claims that HRS may or may not have with respect to the Laughing 20's, because Hal Roach Sr. and HRS are two separate entities, neither having the power to irrevocably bind the other.
Given, then, that Turner was required to send written notice to HRS and pay HRS $ 500 to secure the renewal and that it failed to do so, Feiner is likely to succeed on the merits of the copyright infringement claim.
Whether a preliminary injunction should issue or not rests in the discretion of the district court, Reuters Ltd. v. United Press Intern., Inc., 903 F.2d 904 (2d Cir. 1990), and where special circumstances exist, such as where an injunction would work great public injury, an alternative remedy of may be appropriate. See Abend v. MCA, Inc., 863 F.2d 1465, 1479 (9th Cir. 1988), aff'd sub nom. Stewart v. Abend, 495 U.S. 207, 109 L. Ed. 2d 184, 110 S. Ct. 1750 (1990). Turner has not demonstrated any special circumstances that would justify an eventual award of damages or a continuing royalty, nor has it showed that great public injury will result if the injunction is granted. Cf. Abend, 863 F.2d at 1479.
Accordingly, because Feiner has established the prerequisites for a preliminary injunction, and because Turner has failed to demonstrate that special circumstances exist which warrant an alternative remedy, Feiner's motion for a preliminary injunction is granted.
Submit order on notice, including provision for a bond in the sum of $ 5,000.
Dated: New York, New York
May 14, 1996
Hon. Richard Owen
United States District Judge