The opinion of the court was delivered by: HURLEY
Currently pending before the Court in the above-captioned case is a motion by Defendant Altai, Inc. ("Defendant") to enjoin Plaintiff Computer Associates, Inc. ("Plaintiff") from continuing to maintain an action filed by Plaintiff in France (the "French action"). For the reasons set forth below, Defendant's motion is denied.
I. Plaintiff's United States Action
Plaintiff, a Delaware corporation with its principal place of business in New York, brought this copyright infringement and trade secret misappropriation action against Defendant, a Texas corporation with its principal place of business in Texas, in August 1988. Plaintiff alleged, inter alia, that Defendant had copied substantial portions of Plaintiff's SCHEDULER computer program into Defendant's own OSCAR 3.4 software program. Computer Assocs. Int'l. Inc. v. Altai, Inc., 775 F. Supp. 544, 549, 552-53 (E.D.N.Y. 1991), aff'd in part and vacated in part, 982 F.2d 693 (2d Cir. 1992). Once suit was brought, Defendant rewrote parts of OSCAR 3.4 and replaced it with OSCAR 3.5. (Pl.'s Mem. at 4; Def.'s Reply Mem. at 8.) Thereafter, Plaintiff amended its complaint to assert claims of copyright infringement with regard to OSCAR 3.5. (Def.'s Reply Mem. at 8.)
By Memorandum and Order entered August 12, 1991, the Honorable George C. Pratt found that Defendant's OSCAR 3.4 computer program had infringed Plaintiff's copyrighted SCHEDULER program and awarded $ 364,444 in actual damages plus pre-judgment interest.
Computer Assocs., 775 F. Supp. at 560-61, 571-73. With respect to Plaintiff's second claim, Judge Pratt found that Defendant's OSCAR 3.5 program was not substantially similar to a portion of SCHEDULER called ADAPTER and, therefore, did not infringe Plaintiff's copyrights. Id. at 561-62, 573. Finally, Judge Pratt concluded that Plaintiff's state law trade secret misappropriation claim had been preempted by the federal Copyright Act. Id. at 563-64.
On December 17, 1992, the Second Circuit affirmed the district court's findings and judgment as to Plaintiff's copyright claims but vacated its holding that Plaintiff's state law trade secret claim was preempted by federal copyright law. Therefore, the circuit court remanded the case to the district court for consideration of the trade secret claim. Computer Assocs., 982 F.2d 693, 712-15, 719-21. On August 20, 1993, Judge Pratt ruled that under Texas law, Plaintiff's trade secret claim was barred by the two year statute of limitations. Computer Assocs. Int'l Inc. v. Altai, Inc., 832 F. Supp. 50, 54 (E.D.N.Y. 1993), aff'd, 61 F.3d 6 (1995). Plaintiff appealed that ruling and the Second Circuit certified the question of Texas law to the Supreme Court of that state. Computer Assocs. Int'l Inc. v. Altai, Inc., 22 F.3d 32, 37 (2d Cir. 1994). On April 3, 1996, following the decision of the Supreme Court of Texas on March 14, 1996, the Second Circuit issued a mandate affirming the decision of Judge Pratt that dismissed Plaintiff's remaining trade secret claim.
Computer Assocs. Int'l, Inc. v. Altai, Inc., 1996 U.S. App. LEXIS 6363, No. 93-7957, 1996 WL 154622, at *1 (2d Cir. Apr. 3, 1996).
II. Plaintiff's French Action
In 1990, Plaintiff and L'Agence Pour La Protection Des Programmes ("L'Agence")
filed an action in the Tribunal de Commerce in Bobigny, France (the "Commercial Court")
against Defendant and la Societe FASTER, S.A.R.L. ("FASTER"), a French company owned by a Dutch concern, which was distributing computer software containing OSCAR 3.5. (Pl.'s Mem. at 7; Def.'s Mem. at 5.) The gravamen of the French action is that the defendants violated Plaintiff's rights under French copyright law
by virtue of Defendant's unauthorized importation, and FASTER's unauthorized distribution, of OSCAR 3.5 in France. (Pl.'s Feb. 15, 1990 Commercial Ct. Compl. at 4-5; Pl.'s Mem. at 14.)
By Ruling entered January 20, 1995, the Commercial Court found that Defendant's OSCAR 3.5 program does not infringe upon Plaintiff's ADAPTER program under French copyright law. (Jan. 20, 1995 Ruling of the Commercial Ct. at 17-22.) On August 25, 1995, Plaintiff appealed the decision of the Commercial Court to the Paris Court of Appeals. (Def.'s Second Supplemental Mem. at 2.) On April 11, 1995, Defendant amended its motion to enjoin Plaintiff from continuing to maintain its appeal of the Commercial Court's decision. (Def.'s Apr. 10, 1995 Mem. at 1-5.) According to the present record, the Paris Court of Appeals has not yet taken any action with respect to that appeal. (Def.'s Second Supplemental Mem. at 2.)
By the instant motion, Defendant seeks to enjoin Plaintiff from continuing to proceed with its French action. First, Defendant maintains that Plaintiff's French action is barred under the doctrine of res judicata. (Def.'s Mem. at 12-17, 21.) Alternatively, Defendant contends that Plaintiff is collaterally estopped from pursuing its French claims. In response, Plaintiff argues that, as an initial matter, Defendant has failed to satisfy certain threshold requirements for a foreign antisuit injunction. (Pl.'s Mem. at 11.) In addition, Plaintiff asserts that neither res judicata nor collateral estoppel precludes Plaintiff's French action. (See id. at 17-25.) For the reasons set forth below, the Court finds that Plaintiff's French action is not barred by the doctrine of res judicata. Moreover, ...