Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

Noval Williams Films LLC v. Branca

United States District Court, S.D. New York

January 11, 2018

NOVAL WILLIAMS FILMS LLC, Plaintiff,
v.
JOHN BRANCA and JOHN McCLAIN, EXECUTORS OF THE ESTATE OF MICAEL J. JACKSON, Defendants.

          OPINION & ORDER

          PAUL A. CROTTY UNITED STATES DISTRICT JUDGE.

         Plaintiff 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")[1] 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.

         Executors 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 GRANTED.

         BACKGROUND

         Noval 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.

         There 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.

         Since 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.

         Obviously the factual record is very much incomplete; but nonetheless the parties move and cross-move for summary judgment.

         LEGAL STANDARD

         Summary 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).

         DISCUSSIONS

         "Because 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 modifications omitted).

         I. Motion to Strike Affidavits by Hasaun Muhammad and Michael Williams

         Executors 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.[2]

         The 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).

         Noval 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.

         Similarly, 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.

         Accordingly, 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.

         II. Executors' Motion for Summary Judgment by Executors on Noval's Declaratory Judgment Action

         Noval's 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.

         (1) Declaration of Copyright Non-Infringement With Respect to Footage

         i. Executors must establish, as a matter of law, that Estate owns copyright.

         In a 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 alleged infringer).

         ii. Executors have not established, as a matter of law, that ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.