9623(RWS), 2000 WL 235284 (S.D.N.Y March 1, 2000).
(2) Civil Action 01 Civ. 4767 (the "Properties Action")
involves a settlement mad, among Briarpatch Limited, Rubin, and
Pate. It is alleged by Geisler, Roberdeau BFC, and BTC that
their employment and literary rights, and their copyrights, in
the properties "The English Speaker" and "Sansho the Bailiff"
have been converted and infringed by Briarpatch Limited Rubin,
(3) Civil Action 01 Civ. 8564 (the "White Hotel Action"),
initiated by Geisler, Rober. deau, and their affiliates,
concerns Briarpatch Limited's, Rubin's, Goldin's and Brick's
alleged interference with a $35 million production contract to
make a film from "The White Hotel".*fn1
The underlying facts of the relationships between the parties
in these three actions have been the subject of several
opinions, familiarity with which is assumed. See Briarpatch
Ltd., L.P. v. Geisler Roberdeau, Inc., 148 F. Supp.2d 321
(S.D.N.Y. 2001); Briarpatch Ltd., L.P. v. Geisler Roberdeau,
Inc., No. 99 Civ. 9623(RWS), 2000 WL 235284 (S.D.N.Y. March 1,
2000); Briarpatch Ltd., L.P. v. Pate, 81 F. Supp.2d 509
(S.D.N.Y. 2000); Briarpatch Ltd., L.P. v. Stage Fright LLC,
86 F. Supp.2d 368 (S.D.N.Y. 2000). The facts, which do not appear to
be in dispute except as noted, are taken from the pleadings,
affidavits, and supporting documents, and also reflect the
findings in the state court after trial.
Briarpatch Limited was formed in 1994 with Rubin as the
limited partner and five general partners (BCC, BFC, BRC, BTC,
and Sansho) owned by Geisler and Roberdeau. The Partnership was
formed for the purpose of developing, producing, and presenting
and exploiting certain motion picture projects. All five general
partners were dissolved by the Secretary of State. Three of the
five corporate general partners, BCC, BFC, and BTC, were
dissolved by the Secretary of State prior to January 1, 1994,
the effective date of the partnership agreement. The other two
general partners, BRC and Sansho, were dissolved by the
Secretary of State on September 27, 1999 and September 24, 1997,
respectively. The Partnership was dissolved upon Rubin's service
of his Notice of Dissolution dated December 15, 1998, and Rubin
was designated sole winding up partner.
The State Court Actions
On December 17, 1998, Briarpatch Limited and Rubin filed a
complaint in the New York Supreme Court, County of New York,
against Geisler and Roberdeau. On March 1, 1999, the Honorable
Ira Gammerman issued a preliminary injunction finding that the
Partnership's projects included, among other things, "The Thin
Red Line," "The White Hotel," "The English Speaker," and "Sansho
the Bailiff." Geisler and Roberdeau were enjoined from
transferring, pledging, hypothecating, or otherwise disposing of
any rights to or in the projects.
On July 12, 1999, after a five-day trial, a thirty-one page
decision (the "July 12, 1999 Decision") was issued by the
Honorable Harold Tompkins. The decision, in its findings of
fact, stated that prior to January 1, 1994, Rubin had an at
least $2.8 million investment in "The White Hotel" that had been
contributed to Briarpatch Limited; that Rubin had become sole
limited partner of the Partnership; that "The White Hotel" had
become owned by and a project of the Partnership; and that
Geisler and Roberdeau had committed breaches of fiduciary duty,
fraud, fraudulent concealment, conversion, misappropriation, and
other misconduct with respect to "The White Hotel" and other
projects, including their diversion of rights to "The White
Hotel." The court found that misrepresentations by or on behalf
of Geisler and Roberdeau were made intentionally to conceal and
prevent discovery of their misappropriation of the rights and
remuneration of the Partnership and of Rubin. Briarpatch
Limited, the court found, never had any bank account, and the
collections from the properties held by the Partnership were not
deposited by Geisler and Roberdeau into a bank account of any
general partner, but instead were commingled in accounts of
The court concluded as a matter of law that as of January 1,
1994, Briarpatch Limited became the beneficial owner of all
rights to projects including, without limitation, "The Thin Red
Line," "The White Hotel," "The English Speaker," "Sansho the
Bailiff," "Secret Friends," and "Sunday in the Park with George"
(the "Projects"), that all rights acquired thereafter with
respect to such Projects belonged to the Partnership, and that
those rights had vested. The court further concluded that
Geisler and Roberdeau breached their fiduciary duties to the
Partnership and to Rubin by misappropriating and diverting to
themselves and to their affiliates (such as their companies
Geisler Roberdeau, Inc., The White Hotel Partnership, and Stage
Fright LLC) opportunities, properties, and monies properly
belonging to the Partnership with respect to the Partnership's
projects, including without limitation "The Thin Red Line," "The
White Hotel," "The English-Speaker," and "Peter Pan/The Boy
Castaways." The court found that Geisler and Roberdeau engaged
in fraud while acting in a fiduciary capacity to the Partnership
and engaged in self-dealing against the Partnership.
The settling order and judgment, entered and docketed October
14, 1999 (the "Order and Judgment"), declared that, as of
January 1, 1994, all beneficial rights, title, and interest in
the Projects resided with Briarpatch Limited and that all right,
title and, interest of Geisler and Roberdeau and their
affiliates in the Projects or remuneration "is hereby
transferred to and vested, effective immediately in the
Partnership." (Verner Aff. Ex. 5, at 2). Geisler and Roberdeau
were enjoined from indicating, or misleading anyone into
believing, that they or any of their affiliates is a general
partner of the Partnership "or has any right, title, or interest
in or to any of the projects, as all such rights, title, and
interest are vested in and belong to the Partnership." (Id. at
3). The court imposed a constructive trust and a constructive
lien on all rights of Geisler, Roberdeau, and their affiliates
to the Projects (Id. at 2) and ordered the immediate delivery to
the Partnership and Rubin of:
all screenplays, stage plays, treatments, and
agreements with respect to the Projects, . . . and
all correspondence, notes, memoranda, books and
records, and other documents relating to the
Partnership or to the Projects since they belong to
and are the property of the Partnership.
(Id. at 4).
No evidence has been presented in the instant actions to cast
doubt on the state court findings and conclusions.
On February 14, 2000, the state court held Geisler and
Roberdeau in civil contempt and directed their incarceration,
referring to an agreement into which, after the March 1, 1999
preliminary injunction, Geisler, Roberdeau, and Myers had
entered with a German company named Constantin relating to "The
White Hotel," and to diversion of a $50,000 fee therefrom. The
February 14, 2000 decision found:
The Fifty Thousand Dollar ($50,000) fee was for
pledging rights to "The White Hotel," and after
payment of taxes . . ., the remainder . . . was
paid to Samuel Myers. Mr. Myers was previously for
many years counsel to defendant Geisler and
Roberdeau, and the Court in its July 12, 1999
decision found that defendants Geisler and
Roberdeau were using him as a straw man . . .
The diversion of Fifty Thousand Dollars
($50,000.00) fee, the financial manipulation found
by the Court in its decision of July 12, 1999, the
admitted existence of extensive records . . . whose
release was blocked by defendants Geisler or
Roberdeau and finally the admitted existence of
some fifty thousand (50,000) documents that
defendants Geisler and Roberdeau decline to produce
. . . lead this Court to the conclusion that civil
contempt is warranted.
(Goldin St. Ex. 11 at 3, 4, 01 Civ. 4767) (citations omitted).
The Remand Decisions of this Court
Meanwhile, on August 12, 1999, Briarpatch Limited and Rubin
had filed in the Supreme Court, State of New York, an action
against Samuel Myers, his daughter Claudia Myers, and two
Geisler-Roberdeau companies, Stage Fright LLC and Geisler
Roberdeau, Inc., that had been involved in "The White Hotel."
The action, alleging causes of action for conspiracy to breach
fiduciary duty, aiding and abetting breach of fiduciary duty,
unjust enrichment, an accounting, and a declaratory judgment as
to ownership of the "White Hotel" rights, was removed by
defendants to this Court and designated as Civil Action 99 Civ.
On March 1, 2000, this Court entered an order (the "March 1,
2000 Order") in which it found no diversity jurisdiction (Rubin
being a New York domiciliary) and no federal subject matter
jurisdiction (as counsel for Geisler Roberdeau, Inc. and Stage
Fright LLC admitted that "those entities did not have standing
to raise the copyright issue"), and remanded the action back to
the New York Supreme Court of original jurisdiction. Briarpatch
Limited, L.P. v. Stage Fright LLC, 86 F. Supp.2d 368, 371
Two other attempts of Geisler, Roberdeau, and their affiliates
to remove that case to this Court were also remanded.
The Pate Proceedings
In July 1999, Pate commenced a proceeding in the United States
District Court for the Southern District of Texas (the "Texas
District Court") based on a promissory note for $1,000,000 and
security interests that Pate obtained against Geisler and
Roberdeau in 1997 in settlement of a lawsuit against Geisler,
Roberdeau, and their affiliated entities. Pate had previously
sued Geisler and Roberdeau for fraud and other causes of action
arising out of fraud perpetrated against him in connection with
investments in movie projects. When the parties entered into a
settlement at that time, Pate had received the promissory note.
Geisler, Roberdeau, and their related entities breached their
obligations under their promissory note, and the parties
resolved that breach by entering into a consent judgment in the
Texas District Court in the principal amount of the note,
$1,000,000, which the court entered on July 17, 1999. Pate then
sought to execute on this judgment by bringing an application in
the Texas District Court seeking a "turnover" of the defendants'
non-exempt property, or in the alternative for a judicial
foreclosure of Pate's collateral. In connection with this
application, Pate submitted a proposed Turnover Order (the
"Turnover Order") to the Texas District Court. Briarpatch
Limited and Rubin filed papers in the Texas District Court
opposing the relief Pate sought.
The Texas District Court directed that certain rights of the
defendants in that action be sold by the United States Marshal.
Those rights, as reflected in the court's Unopposed Order
Directing Turnover in Aid of Judgment (Doc. 33), Exhibit A,
All of Defendants' rights, title and interest . . .
in and to those certain screenplays and/or motion
picture projects entitled The English-Speaker, The
Thin Red Line, The White Hotel and Sansho the
Bailiff (the "Property"). The Property shall also
include all of the defendants' rights, title and
interest in all screenplay employment agreements with
Terrence Malick, as well as all claims and causes of
action defendants may hold against Terrence Malick or
Phoenix Pictures, Inc.
(Pegno Aff. Ex. E, 01 Civ. 4767). The Notice of Sale, which
included the language regarding the "employment agreements,"
were served on Geisler and Roberdeau by the United States
Marshals Service on December 13, 1999, several weeks before the
scheduled sale; and the Turnover Order was annexed to their own
bankruptcy schedules which they personally signed under the
penalty of perjury the month following the sale. The U.S.
Marshal sold those rights to Pate at a public sale on January 4,
1999, and the Texas District Court confirmed the sale.
Meanwhile, on July 9, 1999, Rubin and Briarpatch Limited had
commenced a lawsuit against Pate in New York state court for
declaratory judgment as to the ownership of the rights to
certain film projects at issue in Rubin's and Briarpatch
Limited's action against Geisler and Roberdeau, including the
rights to "Sansho the Bailiff" and "The English Speaker." Pate
removed the action to this Court based on diversity. Rubin and
Briarpatch Limited moved to amend the complaint to add
additional non-diverse defendants and claims, and to remand to
state court, which motion this Court granted on January 20,
2000. The action was removed to federal court again on May 9,
2000, based on the bankruptcy filing of one of the other
defendants. The action was remanded to state court on June 23,
2000 upon the dismissal of that bankruptcy. The case took a
third trip to this Court on March 16, 2001, when another
defendant, Geisler Roberdeau, Inc., removed the action based on
its filing of a bankruptcy petition on March 13, 2001 in the
United States Bankruptcy Court for the Northern District of
Texas, Dallas Division, with the express intention of
transferring the case to that district; and the action was
remanded to state court for a third time on June 6, 2001.
Pate resolved the claims against him by Rubin and Briarpatch
Limited during an April 25, 2001 settlement conference in
Geisler and Roberdeau's bankruptcy cases. The basic terms of the
settlement were put on the record and later embodied in a
The Texas Bankruptcy Proceedings and the Properties Action
On February 28, 2000, Geisler, Roberdeau and their company
Stage Fright LLC filed Chapter 11 petitions in the United States
Bankruptcy Court in Dallas, Texas (the "Texas Bankruptcy
Court"). The Texas Bankruptcy Court converted their cases to
Chapter 7 cases, and denied them dischargeability. The
bankruptcies were assigned to the Honorable Steven A.
Geisler and Roberdeau filed the Properties Action, Civil
Action 01 Civ. 4767, on June 1, 2001 against Pate, Briarpatch
Limited, and Rubin and amended the complaint on October 4, 2001,
alleging that Geisler and Roberdeau obtained rights from Malick
"to be employed personally to produce" any film of his script
"The English-Speaker" or any theatrical production of Malick's
stage play "Sansho the Bailiff" (Am. Compl. at ¶¶ 35, 44). The
complaint also alleges that in April 1998, Geisler and Roberdeau
agreed not to proceed with a malpractice action against another
attorney in Texas at Pate's request, in reliance on Pate's
"promise and reaffirmation of the [their] contractual right" to
act as producers of "The English-Speaker." (Am. Compl. at ¶ 75).
The complaint further details a meeting in Austin, Texas in
August 2000, at which Geisler and Roberdeau assert that Pate
promised that these "employment rights . . . would be honored."
(Am. Compl. at ¶ 77).
Geisler and Roberdeau assert that Pate improperly included
their employment rights for "Sansho the Bailiff" and "The
English-Speaker" in the Turnover Order that the Texas District
Court signed after they defaulted on their settlement
obligations to Pate, and that the settlement agreement that
Pate, Rubin, and Briarpatch Limited entered into on April 25,
2001 was part of a "conspiracy to wrongfully convert" the
employment rights of Geisler and Roberdeau regarding "Sansho the
Bailiff" and "The English-Speaker." (Am. Compl. at ¶ 174). The
complaint includes claims for copyright infringement,
declaratory judgment, conversion and conspiracy to convert,
tortious interference with contractual relations, breach of
contract, fraud, breach of fiduciary duty and conspiracy to
breach fiduciary duty, and a claim for "common law bad faith."
This lawsuit was the subject of recent proceedings before the
Texas Bankruptcy Court. Rubin and Briarpatch Limited filed a
motion for sanctions for abuse of process against Geisler and
Roberdeau arising out of the latter's filing and wide public
dissemination of a grievance with the State Bar of Texas against
Rubin's and Briarpatch Limited's local counsel. On the eve of
the April 25, 2001 settlement conference described above,
Geisler and Roberdeau had filed a bar grievance with the State
Bar of Texas against Rubin's and Briarpatch Limited's local
counsel, and, contrary to the confidentiality procedures
established by the Texas Bar, sent it to every person associated
with the court-ordered settlement conference as well as the
Office of the United States Trustee, United States Department of
Justice, and to several attorneys in that office. After an
evidentiary hearing, Judge Felsenthal found that Geisler and
Roberdeau "used the cover of the grievance process to obtain a
collateral advantage before this court and to undermine the
settlement process by attempting to chill the advocacy of
opposing counsel." (Pegno Aff. Ex. J, at 5, 01 Civ. 4767).
Judge Felsenthal also found that this lawsuit was part and
parcel of Geisler and Roberdeau's efforts at harassment of their
Following the settlement conference, Roberdeau
and Geisler filed a law suit in the United States
District Court for the Southern District of New
York against the trustee and Passman & Jones, a law
firm with whom Seidel practices law. . . .
In that law suit, Roberdeau and Geisler also
sued Stephen V. Pate and Briarpatch and Rubin
because those persons settled a law suit pending
between them, to which Roberdeau and Geisler were
not parties. Pate, Briarpatch and Rubin announced
their settlement on the record before this court
and then presented it to the United States District
Court for the Southern District of New York, where
the litigation was pending. It appears that
litigation commenced by Roberdeau and Geisler was
intended to undermine the settlement of litigation
in federal court to which they are not parties, and
thereby undermine the integrity of the federal
(Id. at 6-7).
Judge Felsenthal directed that Geisler and Roberdeau show
cause before him on
August 14, 2001, why an order should not enter finding them in
contempt of court and granting related relief, and continued a
temporary restraining order it had issued on June 15, 2001,
which enjoined them from prosecuting this action. After a
hearing, Judge Felsenthal found that this lawsuit was an abuse
of process and was intended to "sen[d] the message to parties in
interest that they will pay a price if they elect to settle
litigation related to Roberdeau and Geisler," and that Geisler
and Roberdeau had acted with "calculated deviousness" in
committing this wrongdoing. (Pate Mem. Ex. A, at 8, 10, 01 Civ.
Parties subsequently filed the instant motions. All except the
motion to dismiss the Properties Action, Civil Action 01 Civ.
4767, were returnable December 12, 2001, at which time they were
deemed fully submitted. The motion to dismiss the Properties
Action was returnable January 30, 2002, at which time it was
deemed fully submitted.
A search of the United States Copyright Office reveals no
copyright registration for "The English-Speaker," or "Sansho the
Bailiff." The copyright to "The White Hotel" reverted to the
author on July 10, 2001.
I. There is No Diversity Jurisdiction Over the Properties
Action or the White Hotel Action
The defendants in both the Properties Action (01 Civ. 4767)
and the White Hotel Action (01 Civ. 8564) have moved to dismiss
the actions for lack of subject matter jurisdiction. The
plaintiffs in each of these actions allege that this Court has
either diversity or federal copyright jurisdiction. This Court
In each of the actions, the parties are non-diverse, with New
York residents Briarpatch Limited and Rubin, on the one hand,
and Geisler and Roberdeau, on the other, opposing one another.
It is not disputed that Geisler and Roberdeau, as well as their
dissolved companies BFC and BTC, are citizens of New York. This
Court has twice held in a related action that Rubin is a citizen
of New York. Briarpatch Limited v. Stage Fright, 86 F. Supp.2d 368,
371 (S.D.N.Y. 2000); Briarpatch Ltd. LP v. Pate,
81 F. Supp.2d 509, 511 (S.D.N.Y. 2000). No facts have been adduced
on these motions to alter those findings.
There is therefore no diversity jurisdiction over the
Properties Action or the White Hotel Action.
II. There is No Federal Copyright Jurisdiction
The defendants in both the Properties Action (01 Civ. 4767)
and the White Hotel Action (01 Civ. 8564) also contend that no
subject matter jurisdiction exists under the Copyright Act,
28 U.S.C. § 1338.
For cases "arising under" particular federal statutes
conferring federal jurisdiction, "Congress has given the lower
federal courts jurisdiction to hear, originally or by removal
from a state court, only those cases in which a well-pleaded
complaint establishes either that federal law creates the cause
of action or that the plaintiffs right to relief necessarily
depends on resolution of a substantial question of federal law."
Franchise Tax Bd. of State of Cal. v. Construction Laborers
Vacation Trust for Southern California, 463 U.S. 1, 27-28, 103
S.Ct. 2841, 77 L.Ed.2d 420 (1983); see also Caterpillar Inc. v.
Williams, 482 U.S. 386, 392, 107 S.Ct. 2425, 96 L.Ed.2d 318
(1987) (explaining the well-pleaded complaint rule). Simply
including a federal issue in a state cause of action, however,
does not in itself warrant federal question jurisdiction. There
must be substantial federal question at issue, as opposed to a
minor or technical addition to
a state claim. See D'Alessio v. New York Stock Exchange, Inc.,
258 F.3d 93, 99 (2d Cir. 2001); Travelers Indem. Co. v.
Sarkisian, 794 F.2d 754, 762 (2d Cir. 1986); Tasini v. New
York Times Co., 184 F. Supp.2d 350 (S.D.N.Y. 2002).
A district court has jurisdiction of actions arising under the
Copyright Act. However, not every action affecting or involving
copyright "arises under" the Copyright Act. In T.B. Harms Co.
v. Eliscu, 339 F.2d 823, 828 (2d Cir. 1964), cert. denied,
381 U.S. 915, 85 S.Ct. 1534, 14 L.Ed.2d 435, Judge Friendly
enunciated the principles determining federal copyright
An action "arises under" the Copyright Act if and
only if the complaint is for a remedy expressly
granted by the Act, e.g., a suit for infringement or
for the statutory royalties for record reproduction
. . ., or asserts a claim requiring construction of
the Act, . . . at the very least and perhaps more
doubtfully, presents a case where a distinctive
policy of the Act requires that federal principles
control the disposition of the claim. The general
interest that copyrights, like all other forms of
property, should be enjoyed by their true owner is
not enough to meet this last test.
That test was recently reaffirmed by the Second Circuit in
Bassett v. Mashantucket Pequot Tribe,