The opinion of the court was delivered by: Sifton, Senior District Judge.
Plaintiff Susan Nicholson Hofheinz moves by order to show cause
signed November 1, 2000, for a preliminary injunction pursuant to
Rule 65 of the Federal Rules of Civil Procedure against
defendants, AMC Productions, Inc. and Rainbow Media Holdings,
Inc. alleging that defendants have (1) infringed plaintiff's
copyrighted works in violation of the Copyright Act of 1976 (the
"Act"), 17 U.S.C. § 101 et seq.,*fn1 (2) infringed
trademarks by falsely designating the origins of plaintiff's
copyrighted works in violation of the Lanham Act,
15 U.S.C. § 1125(a), (3) breached the parties' March 23, 1999 agreement, (4)
engaged in unfair competition, and (5) used the name,
photographic image, or other likeness of the late James Nicholson
in violation of California's publicity rights statute, Section
3344.1 of the Civil Code of the State of California.*fn2
For the reasons set forth below, plaintiff's application for a
preliminary injunction is denied. What follows sets forth the
findings of fact and conclusions of law on which the decision
denying a preliminary injunction is based, as required by Rule 65
of the Federal Rules of Civil Procedure.
The following facts are taken from the submissions of the
parties in connection with the instant application. Since the
relevant facts are undisputed, no evidentiary hearing is
required. See Brown v. Giuliani, 158 F.R.D. 251, 254 (E.D.N Y
Plaintiff is the widow of the late James Nicholson, one of the
principals responsible for many of the motion pictures produced
by American International Pictures ("AIP") during most of the
company's existence. From 1954 through 1980, AIP released more
than five hundred motion picture films. AIP's films helped
establish what are known as the monster and teenage motion
picture genres. Plaintiff holds the copyrights to a number of her
late husband's motion pictures, six of which are at issue
here.*fn3 Plaintiff resides in Palm Desert, California.
Defendant AMC Productions, Inc. is the subsidiary of American
Movie Classics Company ("AMCC"), a cable television programming
service and acts as AMCC's licensing arm. AMCC is currently
accessible to over sixty-five million United States domestic
In February 1999, plaintiff met with Nancy McKenna, vice
president of Production for AMCC, to discuss AMCC's desire to
produce a documentary about AIP. On March 23, 1999, plaintiff
sent defendants a written contract proposal (the "March 23, 1999
proposal"), offering defendants the right to use six, 59-second
clips from AIP motion pictures in which plaintiff owns copyrights
to enable defendants to produce "It Conquered the World! The
Story of American International Pictures" (the "Documentary"), a
documentary about AIP and of its two principals, Sam Arkoff and
James Nicholson. The original proposal offered defendants the
rights to exhibit
the film clips in the NTSC video format (domestic cable). The
films originally included in the March 23, 1999 proposal were "I
Was a Teenage Werewolf," "I Was a Teenage Frankenstein," "The
Amazing Colossal Man," "Naked Paradise/ Thunder Over Hawaii,"
"The Invasion of the Saucerman," and "It Conquered the World."
Subsequent to defendants' receipt of the March 23, 1999 proposal,
defendant requested and plaintiff agreed to an alteration of the
proposal, memorialized in a handwritten "addendum." The addendum
provides that, in lieu of a clip from "Naked Paradise/ Thunder
Over Hawaii," defendants will include a clip of equal length from
"Apache Women," and that in lieu of a clip from "The Amazing
Colossal Man," defendants will include a clip of up to two
minutes in length from "It Conquered the World." On July 9, 1999,
the parties signed the March 23, 1999 proposal with the
handwritten addendum included therein, forming the original
licensing agreement (the "licensing agreement"). The agreement
states that "all matters or issues collateral hereto shall be
governed by the laws of the State of California." Plaintiff
granted the license in exchange for $36,000 and deposited
defendants' check for that amount on July 12, 1999.
In January 2000, John Fitzgerald, associate producer at Planet
Grande Pictures, Inc., AMCC's production company, contacted
plaintiff, explaining that he contemplated using photographs of
Nicholson in the Documentary. In response, plaintiff sent
Fitzgerald approximately twenty photographs of Nicholson.
Fitzgerald later returned the photos to plaintiff without
comment. Plaintiff states that she assumed that AMC did not
intend to use any of the photos in the Documentary since
Fitzgerald did not ask her to give permission to do so.
In May 2000, defendants decided the quality of the Documentary
made it worthy of consideration of the Academy of Motion Picture
Arts and Sciences' (the "Academy") award for the year's best
documentary. In June 2000, McKenna met with a consultant to
determine what requirements had to be met in order to qualify the
Documentary for award consideration and was told that, in order
to be eligible for such an award, the Documentary had to have
been exhibited in theaters for at least seven consecutive days
during the year. In June 2000, the parties began discussing the
terms of an additional license granting defendants the right to
the show the Documentary in theaters.
On July 12, 2000, Fitzgerald sent plaintiff a list of the film
clips used in the final production of the Documentary. The list
included a short clip of "The Amazing Colossal Man." Plaintiff
immediately notified McKenna that "The Amazing Colossal Man" was
not covered by the licensing agreement.
Defendants asked plaintiff for permission to substitute the
clip from "The Amazing Colossal Man" for a clip from "Apache
Woman," which they had not used in the Documentary.
On August 17, 2000, Abigail Kende, president of Tele-Cinema,
Inc., a company that does copyright and title clearances for
AMCC, faxed plaintiff a written contract proposal modifying the
licensing agreement by substituting "The Amazing Colossal Man"
for "Apache Woman" and including the right to exhibit the
Documentary in theaters for seven days. On August 28, 2000, Kende
mailed plaintiff three hard copies of the modified licensing
proposal on August 28, 2000. Kende also mailed plaintiff two
checks for $2,500 and $5,500, representing plaintiff's licensing
and consulting fees.
On August 29, 2000, plaintiff mailed her own contract
proposal*fn4 to defendants. The cover letter to plaintiff's
Thank you for the package containing two checks
totaling $8,000.00 and the draft of a new contract.
Rather than reinvent the wheel and leave open the
question of which is the REAL agreement, I would
prefer simply to sign a modification of the deal we
already have in place. I believe this is Abigail's
Please review the enclosed First Modification to Film
Clip License Agreement. If it meets with your
approval, please execute it and send copies to me for
I will hold the checks until we have full agreement
on all these matters.
Plaintiff's First Modification to the Film Clip License
Agreement stated in pertinent part:
Licensee agrees to exclude clips from the titles
Apache Woman and Naked Paradise/Thunder over
Hawaii from the Program. Licensor grants to Licensee
the right to include in the Program a clip of 59
seconds or less from The Amazing Colossal Man,
including but not limited to the "dream ...