United States District Court, S.D. New York
OPINION & ORDER
A. CROTTY UNITED STATES DISTRICT JUDGE.
Noval Williams Films LLC ("Noval") brings this
declaratory judgment action against Defendants John Branca
and John McClain, Executors of the Estate of Michael J.
Jackson ("Executors"), seeking: (1) a declaration
that Noval has not infringed a copyright in a video footage
or photographs of the late pop star Michael Jackson
("Jackson") used in its documentary film,
"Michael: The Last Photo Shoots"
("Film") and has not breached, or caused a breach
of, any agreement in relation to the video footage or
photographs; and (2) further relief, under 28 U.S.C.
§2202, based on any declaratory judgment. ECF 21 (First
Amended Complaint ("FAC")) ¶ 70. Executors
counterclaim, seeking a declaration that "the Estate
owns the Footage and all rights therein, and/or that
Plaintiff cannot commercially exploit the Footage without the
Estate's approval, consent, and/or involvement." ECF
50 (First Amended Answer ("FAA")) ¶ 33.
move for summary judgment on Noval's claims, and Noval
cross-moves for partial summary judgment on the
Executors' counterclaim and the Noval's declaratory
judgment claim. Executors also move to strike affidavits by
Hasaun Muhammad and Michael Williams submitted by Noval in
support of its motions. Since there are numerous factual
disputes, the parties' motions for summary judgment must
be DENIED. The Executors' motion to strike, however, is
has produced Film exploiting: (1) parts of a video footage of
Jackson at photo shoots for Vogue and Ebony
("Footage") and (2) some photographs of Jackson
("Photos"). Noval seeks a declaration that it has
not infringed any copyright in the Footage and Photos; and
that it has not breached, or caused a breach of, any
agreement related to the Footage and Photos. See FAC
¶¶ 8-12, 44-46, 66, 68, 70. Executors cross-claim
for a declaration that the Estate is the owner of the Footage
and Photos and/or that Noval cannot exploit the Footage and
Photos, without the Estate's approval.
5eeFAA¶¶26, 31, 33.
is a substantial dispute over who owns the Footage. Noval
contends that the Footage is owned by Bonaventura Films, LLC
("Bonaventura"), through a chain of ownership: the
Footage was initially owned by Hasaun Muhammad
("Muhammad"), who subsequently transferred the
ownership to Craig J. Williams/Craig J. Williams Productions,
who, in turn, transferred the ownership to Bonaventura. See
ECF 112 ("Cross Summ. J. Mem.") at 8-9; FAC
¶¶ 44-46, Exs. D, E. Bonaventura subsequently
granted Noval an exclusive license to use the Footage,
Executors, however, contend that the Footage is owned by the
Estate. While Jackson gave permission to Muhammad to take the
Footage, it was in the express condition that the Footage
would be for Jackson's exclusive personal use and that
Muhammad would not commercially exploit it without
Jackson's consent. Muhammad understood and agreed to
Jackson's conditions. FAA ¶¶ 13, 33.
Jackson is deceased, the only living person with direct
information on the ownership issue is Muhammad. But Muhammad
has proven to be more elusive than a phantom. Executors have
made numerous attempts to depose Muhammad; none have been
unsuccessful. Although Muhammad has submitted an affidavit,
he has resisted deposition. Apparently, Muhammad submitted
his affidavit "so that Muhammad would not have to appear
for a deposition, and because Muhammad did not want to be
otherwise involved in the case." ECF 145
("Rosenberg Decl.") ¶ 45.
the factual record is very much incomplete; but nonetheless
the parties move and cross-move for summary judgment.
judgment is available where "the movant shows that there
is no genuine dispute as to any material fact and the movant
is entitled to judgment as a matter of law."
Fed.R.Civ.P. 56(a). The movant bears the burden of
demonstrating the absence of any genuine dispute of material
facts. See Anderson v. Liberty Lobby, Inc., 477 U.S.
242, 247 (1986); Celotex Corp. v. Catrett, 477 U.S.
317, 323 (1986). Where the non-moving party has the burden of
proof, the moving party need only show that there is no
admissible evidence to support a necessary element of the
non-moving party's claim. Celotex, 477 U.S. at
325. Summary judgment is warranted where "the record
taken as a whole could not lead a rational trier of fact to
find for the non-moving party." Smith v. Cnty. of
Suffolk, 776 F.3d 114, 121 (2d Cir. 2015).
a decision on the motion to strike may affect the
movant's ability to prevail on summary judgment, it is
appropriate to consider the Motion to Strike prior to the
parties' motions for ... summary judgment." Rund
v. JPMorgan Chase Grp. Long Term Disability Plan, 2012
WL 1108003, at *1 (S, D, N.Y. Mar. 30, 2012) (internal
Motion to Strike Affidavits by Hasaun Muhammad and Michael
move to strike affidavits by Hasaun Muhammad and Michael
Williams ("M. Williams"), contending that Noval
failed to disclose affiants' contact information on a
timely basis, as required by the Federal Rule of Civil
Procedure 26. See ECF 140, 141. The Court grants the motion,
but on a different ground.
Federal Rule of Civil Procedure 56(c)(4) requires that
"[a]n affidavit or declaration used to support or oppose
a [summary judgment] motion must be made on personal
knowledge, set out facts that would be admissible in
evidence, and show that the affiant or declarant is competent
to testify on the matters stated." (Emphasis added). As
this Rule suggests, a party introducing an affidavit must
make "an implicit or explicit showing that the affiant
is prepared to testify in a manner consistent with [the]
affidavit." Santos v. Murdoch, 243 F.3d 681,
684 (2d Cir. 2001) (emphasis added).
has failed to satisfy these requirements. With respect to
Muhammad's affidavit, Noval has not established, in the
affidavit or in its briefs, that Muhammad is prepared to
testify, much less "prepared to testify in a manner
consistent with [the] affidavit." Id. Noval and
Muhammad have treated discovery as a game of hide and seek.
Noval made numerous promises to produce Muhammad for
deposition, but the promises were illusory. Noval's
conduct implicitly admits that it cannot produce Muhammad,
even at behest of the Court. See ECF 137. Indeed, Executors
found out, during an unplanned phone call from Muhammad, that
Muhammad signed his affidavit "so that Muhammad would
not have to appear for a deposition, and because Muhammad did
not want to be otherwise involved in the case."
Rosenberg Decl. ¶ 45. Muhammad is not "prepared to
testify in a manner consistent with [his] affidavit."
Santos, 243 F.3d at 684.
with respect to M. Williams's affidavit, Noval has not
established, in the affidavit or in its briefs, that M.
Williams is prepared to testify. He too is as elusive as
Muhammad: M. Williams has not been reachable by any of the
parties. On June 1, 2017, this Court ordered Noval to produce
M. Williams for deposition and provide Executors with M.
Williams's contact information. ECF 145-15
("Rosenberg Decl, Ex. 0"), 7:11-8:24. On two
occasions, Noval produced what it characterized as M.
Williams's contact information, including residential
addresses of M. Williams, ECF 145-16, 25 ("Rosenberg
Decl. Exs. P, Y"). None of the addresses were valid,
however. Residence at one of the two addresses was occupied
by someone who has lived there for about five years and does
not know of M. Williams. ECF 143 ("Centeno Decl.")
¶4. The other address corresponded to an apartment
building, and the staff in the leasing office was unwilling
to confirm whether M. Williams lives there. ECF 142
("Ordorica Decl.") ¶4. After appropriate,
reasonable search, Executors could not find M. Williams.
Noval has not been able to cure that either. If M. Williams
cannot be reached with reasonable diligence, the Court cannot
find that M. Williams is prepared to testify.
the Court grants the motion to strike the affidavits by
Hasaun Muhammad and M. Williams, submitted at ECF 113, 126,
and 127. The Court directs the Clerk of Court to strike
docket entries ECF 113, 126, and 127.
Executors' Motion for Summary Judgment by Executors on
Noval's Declaratory Judgment Action
declaratory judgment action seeks three declarations: (1)
Noval has not infringed any copyright in the Footage
("First Request"); (2) Noval has not infringed any
copyright in the Photos ("Second Request"); and (3)
Executors have no valid claim for breach of agreement,
inducement of breach of agreement, or tortious interference
with agreement ("Third Request"). Noval also
requests further relief under 18 U.S .C. § 2202 in case
the Court grants all or part of the requested declaratory
relief ("Fourth Request"). Executors' motion
for summary judgment on all four requests is denied.
Declaration of Copyright Non-Infringement With Respect to
Executors must establish, as a matter of law, that Estate
declaratory judgment action seeking a declaration that
intellectual property is not infringed, the burden of proof
remains with the owner of the intellectual property who must
establish infringement. See Medtronic, Inc. v. Mirowski
Family Ventures, LLC, 134 S.Ct. 843 (2014) (holding that
when a declaratory judgment plaintiff seeks a declaration
that there is no patent infringement, a declaratory judgement
defendant (i.e., the patent owner) retains the
burden of proof to establish that the patent has been
infringed); Classic Liquor Importers, Ltd. v. Spirits
Int'l B.V., 201 F.Supp.3d 428 (S.D.N.Y. Aug. 19,
2016) (extending Medtronic to the trademark
context). Therefore, the declaratory judgement defendant has
to establish infringement as a matter of law. Since an
element of a copyright infringement claim is copyright
ownership, the declaratory judgement defendant must establish
the copyright ownership as a matter of law, if she
is to prevail on summary judgment. See Effie Film, LLC v.
Murphy, 932 F.Supp.2d 538, 553 (S.D.N.Y. Mar. 22, 2013),
aff'd, 564 Fed.Appx. 631 (2d Cir. 2014) (A
copyright infringement claim is established with "two
elements: ownership of a copyright and the copying of
original elements in the copyrighted work" by the
Executors have not established, as a matter of law, that