Bangkok Broad. & T. v. Co.

742 F.Supp.2d 1101

BANGKOK BROADCASTING & T.

v. CO., LTD., a Thailand Corporation, Plaintiff,

v.IPTV CORPORATION, a California Corporation, et al., Defendants.And Related Counterclaim.

No. CV 09–03803 SJO (SSx).

United States District Court, C.D. California.

May 11, 2010.

Howard Wisnia, Sanjay Bhandari of Baker & McKenzie, for Plaintiff.Reza Sina, Sina Law Group, for Defendants.

ORDER GRANTING PLAINTIFF'S MOTION FOR SUMMARY JUDGMENT AND DENYING DEFENDANTS' MOTION FOR SUMMARY JUDGMENT OR, IN THE ALTERNATIVE, FOR SUMMARY ADJUDICATION [Docket Nos. 121, 123]

S. JAMES OTERO, District Judge.

This matter is before the Court on Plaintiff Bangkok Broadcasting & T.V. Co., Ltd.'s (“Plaintiff” or “BBTV”) Motion for Summary Judgment, and Defendants IPTV Corporation (“IPTV”), BKT Group, Inc. (“BKT”), Ron Petcha, Tip Petcha, and Noppadon Wongchaiwat's (“Wongchaiwat”) (collectively, “Defendants”) Motion for Summary Judgment or, in the Alternative, for Partial Summary Adjudication, both filed on March 8, 2010. The parties filed Oppositions and Replies to the respective Motions. The Court heard argument on May 10, 2010, the date set for pretrial conference. For the following reasons, the Court GRANTS Partial Summary Adjudication in favor of Plaintiff and Defendants' Motion is DENIED.

I. BACKGROUND

BBTV is a Thai broadcasting corporation that operates Channel 7, one of the six major free television channels in Thailand, which broadcasts news reports, sports programs, and variety shows. (First Am. Compl. (“FAC”) ¶¶ 9, 44–49; Pl.'s Separate Statement of Undisputed Facts in Supp. of Mot. for Summ. J. (“Pl.'s SOF”) ¶ 1; Defs.' Statement of Genuine Issues of Material Facts (“Defs.' SOF”) ¶ 1) BBTV owns U.S. copyright registrations for many of its programs, including the ones at issue. (FAC ¶ 52, Ex. 1; Pl.'s SOF ¶ 2; Joint Statement of Undisputed Facts (“JSUF”) ¶¶ 20–29; Defs.' SOF ¶ 2.) In addition, the U.S. Patent and Trademark Office granted BBTV federal registration for its insignia, three overlapping circles with a number “7” appearing in the middle, which appears in the top right-hand corner of all of its programs. (FAC ¶¶ 56–62; JSUF ¶¶ 26–29.) The validity of Plaintiff's copyright and trademark registrations is not disputed. (JSUF ¶¶ 20–29.)

IPTV is a California corporation that provides Thai television programs, in various formats, to Thai communities in the United States (“United States” or the “U.S.”) and abroad. (FAC ¶¶ 10, 78–89.) It is disputed, however, whether BKT, which is also a California corporation, is the parent company and controlling entity of IPTV. (FAC ¶ 13; Pl.'s Statement of Genuine Issues in Opp'n to Defs.' Mot. for Summ. J., or Alternatively Summ. Adjudication (“Pl.'s SOF in Opp'n”) ¶ 39–42; Defs.' Statement of Uncontroverted Facts and Conclusions of Law in Supp. Mot. for Summ. J. (“Defs.' Addt'l SOF”) ¶¶ 39–42.) As to the individual Defendants, Ron Petcha, Tip Petcha, and Wongchaiwat are alleged to be “employed, own[ ], operate[ ] and/or supervise[ ] the operation of BKT and IPTV” and to “authorize[ ] and direct [ ] BKT's and IPTV's activities,” as well as to “derive economic benefit from their business operations.” (FAC ¶¶ 122–28, 29–33, 34–40; Pl.'s SOF in Opp'n ¶¶ 22–29, 30–38; Pl.'s SOF ¶¶ 5–6; Defs.' SOF ¶ 5; Defs.' Addt'l SOF ¶¶ 22–38.)

Plaintiff contends that from “at least approximately August 1, 2008 to July 31, 2009, Defendants reproduced, distributed, publicly performed and/or publicly displayed BBTV's programs (i.e., the programs listed in Exhibits 1 and 2 to the FAC) by (i) offering for sale or rental tapes, VCDs and DVDs containing BBTV's programs, and (ii) rebroadcasting BBTV's programs in the U.S. and abroad via satellite TV, cable TV, broadband internet, and other means.” (FAC ¶¶ 12, 66–73, 78–82; Pl.'s SOF ¶ 4.) Defendants do not dispute this. (JSUF ¶¶ 22–25; Defs.' SOF ¶ 4.)

“Beginning in 2003, IPTV entered into a series of sublicense agreements [which allowed] it to exploit BBTV's programs in the [U.S.]” (JSUF ¶ 1; Defs.' SOF ¶ 3.) The final sublicense agreement “between Media of Medias and IPTV was entered into on August 2007 and terminated on July 31, 2008.” (JSUF ¶ 2.) Media of Medias did not renew this sublicense agreement. (JSUF ¶ 3.) Consequently, on July 15, 2008, Ron Petcha met with members of BBTV's “Consideration of Program Schedule and Air Time Rental Committee (the “CPSATR Committee”), including Mr. Chalor Nark-on (the Chairman of the CPSATR Committee), and Pattanapong Nuphan (“Nuphan”), a member of the CPSATR Committee, at BBTV's headquarters in Bangkok, Thailand.” ¹ (JSUF ¶ 4; Defs.' SOF ¶ 6.) Ron Petcha “offered BBTV $220,000 for a new annual license, [but] which BBTV rejected.” (Pl.'s SOF ¶ 7; Defs.' SOF ¶ 7.)

Subsequent to the July 15, 2008 meeting, the parties met again, but do not agree on what was resolved or concluded during their subsequent meetings and/or correspondences. “On August 17, 2008, Ron Petcha attended a meeting in Bangkok with BBTV's [CPSATR Committee], .... wherein the parties discussed matters bearing on the potential renewal of a license agreement.” (Pl.'s SOF ¶ 8; Defs.' SOF ¶ 8.) “IPTV sent and BBTV received a letter dated August 18, 2008, proposing to pay $240,000 for a one-year renewal of IPTV's prior license rights for BBTV's work.” (Pl.'s SOF ¶ 9; Defs.' SOF ¶ 9.) However, on August 29, 2008, BBTV rejected IPTV's August 18, 2008 proposal “as insufficient, and [instead, BBTV] ma[de] an offer of more limited rights for one year at $220,000.” (Pl.'s SOF ¶ 10; Defs.' SOF ¶ 10.)

Defendants claim that Ron Petcha “reached a binding oral license agreement with [Nuphan] during a September 1, 2008 telephone call between” the two men. (Pl.'s SOF ¶ 11; JSUF ¶ 11; Defs.' SOF ¶ 11; Defs.' Addt'l SOF ¶ 16.) “Based on the September 1, 2008 [oral] agreement, IPTV continued to exploit BBTV's programming.” (Defs.' Addt'l SOF ¶ 21.) Defendants therefore assert that “[a]n agreement for the use of BBTV's content was reached ... where IPTV would pay $45,000 per month to BBTV for[:] (1) exclusive rights to BBTV's programming in the United States and Canada[;] (2) non-exclusive rights in Europe[;] and (3) BBTV's assumption of the obligation to pursue infringement suits. No agreement was ever reached for a standalone exclusive license.” (Defs.' SOF ¶ 12.) Defendants' Opposition states that “the negotiations concerned a bundle of rights, not rights independent of one another.” (Defs.' Opp'n to Pl.'s Mot. for Summ. J. (“Defs.' Opp'n”) 1.) The negotiations relating to this so-called “bundle of rights” will therefore, be referred to by the Court as the “Bundle Agreement.” Plaintiff, however, argues that “Defendants have repeatedly and under oath claimed that IPTV's alleged oral license agreement with BBTV was an exclusive license within the U.S. and Canada, and indeed that IPTV would not have agreed to pay $45,000 per month in license fees if the license was not exclusive.” ² (Pl.'s SOF ¶ 12.) In response, Defendants claim that they “have never asserted that the license [relating to the U.S. and Canada] was ... exclusive.” ³ (Defs.' SOF ¶ 12.)

In any event, Plaintiff contends that Nuphan “spoke to [Ron Petcha] over the telephone on September 3, 2008, in IPTV's words[,] ‘to repudiate’ the discussions of September [1, 2008,] conveying that BBTV would not go forward on the basis of the terms discussed on September 1 [, 2008].” (Pl.'s SOF ¶ 5.) Plaintiff argues, and Defendants admit, that “[n]o written license agreement was ever signed by both parties as a result of the 2008 license negotiations; BBTV never sent IPTV a formal license agreement to memorialize any alleged oral license agreement....” (Pl.'s SOF ¶ 16; JSUF ¶ 18; Defs.' SOF ¶ 16.) Defendants, however, contend that Nuphan's September 3, 2008 call was to inform IPTV that BBTV intended to breach the September 1, 2008 agreement “due to a change of mind.” (Defs.' SOF ¶ 15.)

Subsequently, “BBTV sent and IPTV received a letter dated October 17, 2008, ... revoking BBTV's August 29, 2008 offer to the extent it was outstanding.” (Pl.'s SOF ¶ 17; JSUF ¶ 14; Defs.' SOF ¶ 17.) Then, on October 20, 2008, IPTV sent BBTV an e-mail “claiming a license agreement was formed on September 1[,] [2008].” (Pl.'s SOF ¶ 18; JSUF ¶ 15; Defs.' SOF ¶ 18.) In response, BBTV sent IPTV a letter “dated November 5, 2008, stating ... that ‘no agreement on TV program license between ... BBTV and IPTV has yet been concluded or agreed.’ ” (Pl.'s SOF ¶ 19; JSUF ¶ 16; Defs.' SOF ¶ 19.) “After the November 5, 2008 letter, the parties had no substantive contact until May 2009.” (Pl.'s SOF ¶ 20; JSUF ¶ 17; Defs.' SOF ¶ 20.)

On May 28, 2009, Plaintiff filed suit against Defendants. On January 26, 2010, Plaintiff amended its Complaint to include the following causes of action: (1) direct copyright infringement pursuant to 17 U.S.C. § 501, et seq. ; (2) trademark infringement pursuant to 15 U.S.C. §§ 1114, 1125(a); (3) common law trademark infringement; (4) trademark dilution in violation of the Lanham Act; (5) unfair competition and false designation of origin, 15 U.S.C. § 1125(a); (6) common law and California Business and Professions Code § 17200, et seq. ; (7) inducement and contributory infringement; (8) vicarious infringement; (9) breach of contract by IPTV; (10) breach of oral agreement by IPTV; (11) constructive trust, California Civil Code § 2224. ( See generally FAC.)

Defendants assert several counterclaims, including: (1) breach of contract; (2) fraud; (3) negligent misrepresentation; (4) breach of covenant of good faith and fair dealing; and (5) intentional interference with prospective and contractual relations. ( See generally Answer.) Additionally, Defendants assert the following affirmative defenses: (1) equitable estoppel; (2) laches; and (3) unclean hands. ( See generally Answer.)

Both sides now move for summary judgment or, alternatively, partial summary adjudication. Plaintiff contends that “[s]ummary judgment of...