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January 2, 2001


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 plaintiff's 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 1994).

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 households.

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 mailing stated:

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 intention.
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 my signature.
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 ...

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