The opinion of the court was delivered by: CHIN
In this copyright action, plaintiffs Hanson plc ("Hanson") and The Lowe Group ("Lowe") seek a declaration that a television commercial promoting Hanson's corporate image does not infringe upon the copyright in the James Bond character held by Metro-Goldwyn-Mayer Inc. ("MGM") and Danjaq, Inc. ("Danjaq"). MGM and Danjaq have filed a parallel copyright infringement action in the Central District of California. Hanson and Lowe move to enjoin the later-filed California action pursuant to the "first-filed" rule. MGM and Danjaq cross-move to dismiss this action on the ground that the California action is entitled to priority. For the reasons set forth below, the motion of Hanson and Lowe to enjoin prosecution of the California action is denied and the cross-motion of MGM and Danjaq to dismiss this action is granted.
In February 1996, Hanson, a British company with holdings in various businesses, began airing a corporate image television commercial entitled "Sushi Tonight," which features Roger Moore. The commercial was created and produced by Lowe and Partners SMS ("Lowe-New York"), a New York-based division of defendant Lowe, an international advertising agency headquartered in London.
The Sushi Tonight commercial depicts Roger Moore, dressed in a tuxedo, and a beautiful woman handcuffed to a metal stage that is being lowered into a tank of carnivorous fish. The tank is located in the control room of a maniacal villain who is seeking to take over many of the world's industries and create a large commercial empire. Using his teeth, Moore pulls a hairpin from the woman's hair and unlocks his handcuffs. He throws the handcuffs into the machine that is lowering the stage into the tank, stopping its descent. Moore explains to the villain: "Sorry old boy, the people I work for have beat you to it." The villain asks, "What? The Secret Service?" Moore replies, "At my age? Don't be silly. Why, Hanson, of course!" Moore succeeds in destroying the control room and, in the ensuing chaos, the maniacal villain falls into the tank. With the Hanson name appearing on the screen, Moore is seen escorting the woman away from the destruction. The commercial ends as Moore quips: "I wonder what's eating him?"
On April 23, 1996, Rebecca L. Ford, Esq., Deputy General Counsel-Litigation at MGM ("Ford"), wrote a letter to George Hempstead, Esq., General Counsel of Hanson Industries, Inc. ("Hempstead"), the holding company for Hanson's United States interests (the "Ford letter"). In her letter, Ford demanded that Hanson cease and desist broadcasting the commercial and that Hanson compensate MGM and Danjaq for the alleged misappropriation of their intellectual property -- the rights to the James Bond character.
The Ford letter cited a recent Central District of California case, Metro-Goldwyn-Mayer Inc. v. American Honda Motor Co., 900 F. Supp. 1287 (C.D. Cal. 1995), which recognized a likelihood of success on MGM's and Danjaq's claim that they own the copyright in the James Bond character as expressed in various films. The Ford letter also noted that, in the past, MGM and Danjaq had licensed the James Bond character for use in television commercials for substantial fees. Ford expressed the hope that the matter could be amicably resolved, particularly in light of the long relationship among Moore, MGM, and Danjaq and the personal friendship between the respective principals of Hanson and Danjaq. She suggested the possibility of a retroactive license that would permit Hanson to continue airing the commercial upon mutually acceptable terms. Finally, the Ford letter stated that, although MGM and Danjaq "looked forward to the resolution of this matter, [they] will vigorously enforce [their] rights if no acceptable terms can be reached." (Ford Letter at 3). Ford requested a response to her letter by April 24, 1996.
The following morning, April 24, 1996, Ford spoke to Hempstead by telephone.
Hempstead informed Ford that he would not be handling the matter personally, but that he had referred the matter to Graham Dransfield, senior in-house solicitor at Hanson's London office ("Dransfield"). Hempstead asked Ford not to contact Dransfield directly, as she would be hearing from him shortly. In general terms, Ford and Hempstead discussed the preferability of a settlement and the possibility of mediation.
Ford did not hear from Dransfield or anyone else at Hanson. Instead, two days later, on Friday, April 26th, plaintiffs filed the instant action and Hanson's outside counsel, Weil, Gotshal & Manges, faxed Ford a copy of the complaint the same day. The complaint was accompanied by a letter from Weil, Gotshal expressing willingness to discuss settlement and to withdraw the complaint should the parties reach an amicable solution.
The following Monday morning, April 29, 1996, MGM and Danjaq filed their complaint in the Central District of California asserting claims for copyright infringement, violations of the Lanham Act, unfair competition, and tortious interference with prospective business advantage. Hanson and Lowe were served with the complaint in the California action on April 29, 1996. MGM was served with the summons and complaint in the New York action on May 9, 1996 and Danjaq was served on May 21, 1996.
Ford again spoke to Hempstead by telephone on April 29th. Hempstead apologized for the filing of the complaint in this action, stated that he had not been consulted about the matter, ...