Team Angry Filmworks, Inc. v. Geer

214 F.Supp.3d 432

TEAM ANGRY FILMWORKS, INC., a California company, Plaintiff,

v.Louise A. GEER, as Trustee of the Dille Family Trust, Defendant.

Civ. No. 15–1381

United States District Court, W.D. Pennsylvania.

Signed October 14, 2016

Charles M. Coate, Theresa E. Johnson, Abrams Coate LLP, Los Angeles, CA, for Plaintiff.

David Aronoff, Fox Rothschild LLP, Los Angeles, CA, Jana C. Volante, Fox Rothschild LLP, Pittsburgh, PA, for Defendant.

OPINION

Conti, Chief District Judge

I. INTRODUCTION

In its second amended complaint, California film-production company Team Angry Filmworks, Inc. ("plaintiff") calls upon the court to declare that Philip Francis Nowlan's 1928 science-fiction novella Armageddon–2419 A.D. ("Armageddon ") and character "Buck Rogers" entered the public domain, pursuant to the Declaratory Judgment Act (the "DJA"), 28 U.S.C. § 2201(a). As trustee of the Dille Family Trust (the "Trust"), defendant Louise A. Geer ("defendant") filed a motion:

• to dismiss this action under Federal Rule of Civil Procedure 12(b)(1) for failure to present a justiciable controversy under the DJA and Article III of the Constitution; or

• in the alternative, to join necessary parties under Federal Rules of Civil Procedure 12(b)(7) and 19. (ECF No. 64.)

Having been fully briefed, defendant's motion is ripe for disposition. For the reasons explained in this opinion, plaintiff fails to allege facts sufficient to establish a justiciable controversy under the DJA and Article III, particularly with respect to the immediacy of plaintiff's allegedly infringing activity. Accordingly, the court will grant defendant's Rule 12(b)(1) motion to dismiss plaintiff's complaint without prejudice.

II. PROCEDURAL HISTORY

On August 8, 2015, plaintiff filed a complaint against defendant in the United States District Court for the Central District of California. (ECF No. 1.) On September 15, 2015, defendant filed a motion in the California district court to dismiss the action for want of personal jurisdiction and Article III standing. (ECF No. 15.) On October 23, 2015, the California district court found venue proper in the Western District of Pennsylvania under 28 U.S.C. § 1391(b)(1) and transferred the action to this court under 28 U.S.C. §§ 1404(a) and 1406(a). (ECF No. 27 at 2.)

On November 6, 2015, defendant renewed her Rule 12(b)(1) motion to dismiss plaintiff's complaint in this court. (ECF Nos. 43, 44.) On November 25, 2015, plaintiff filed a brief in opposition to defendant's renewed Rule 12(b)(1) motion to dismiss. (ECF No. 47.) On January 7, 2016, the court held a hearing on defendant's renewed Rule 12(b)(1) motion to dismiss. (Text Minute Entry, 1/7/2016.) Because plaintiff's complaint failed to allege a justiciable controversy under the DJA and Article III, the court granted defendant's Rule 12(b)(1) motion to dismiss without prejudice. (ECF No. 53.)

On January 29, 2016, plaintiff filed an amended complaint. (ECF No. 54.) On February 19, 2016, defendant filed a motion to dismiss plaintiff's amended complaint, with accompanying exhibits, under Rules 12(b)(1) and 12(b)(7) and a motion for joinder of necessary parties or dismissal for lack of indispensable parties under Rules 12(b)(7) and 19. (ECF Nos. 55, 56, 57.) On March 11, 2016, plaintiff filed a response in opposition to defendant's motion and objections to defendant's exhibits. (ECF Nos. 58, 59.) On March 21, 2016 this court issued an opinion and order granting defendant's Rule 12(b)(1) motion to dismiss without prejudice. Team Angry Filmworks, Inc. v. Geer , 171 F.Supp.3d 437 (W.D. Pa. 2016).

On May 20, 2016, plaintiff filed a second amended complaint. (ECF No. 64.) On June 2, 2016, defendant filed a motion to dismiss plaintiff's second amended complaint, with accompanying exhibits, under Rules 12(b)(1) and 12(b)(7) and a motion for joinder of necessary parties or dismissal for lack of indispensable parties under Rules 12(b)(7) and 19. (ECF Nos. 65, 66, 67.) On June 22, 2016, plaintiff filed a response in opposition to defendant's motion and objections to defendant's exhibits. (ECF Nos. 68, 69.) On October 5, 2016 the court heard arguments on the motion. Having been fully briefed and argued, defendant's Rule 12(b)(1) motion to dismiss is ripe for disposition.

III. ALLEGATIONS IN PLAINTIFF'S SECOND AMENDED COMPLAINT

As alleged in plaintiff's second amended complaint, plaintiff is a California corporation with its principal place of business in Los Angeles, California. (ECF No. 64 ¶ 3.) Plaintiff's president is Don Murphy ("Murphy"), a motion picture producer whose production credits include "Natural Born Killers," "The League of Extraordinary Gentlemen," "From Hell," and the "Transformers" franchise. (Id. ) "Motion pictures on which [Murphy] has acted as a producer have generated in excess of [$4 billion] in box office revenues." (Id. )

Defendant resides in New Castle, Pennsylvania. (Id. ¶ 4.) Defendant is trustee of the Trust. (Id. ) Defendant is "actively engaged in offering to license and licensing... rights in and to the character of ‘Buck Rogers,’ " who "first appeared" in Armageddon in 1928 as "Anthony Rogers." (Id. )

Philip Francis Nowlan ("Nowlan") was a science-fiction writer "best known for creating the character of ‘Buck Rogers.’ " (Id. ¶ 7.) Buck Rogers "first appeared" in Armageddon as " ‘Anthony Rogers' " in the magazine " ‘Amazing Stories' (Volume 3, No. 5, August 1928)."¹ (Id. ) Nowlan died in 1940. (Id. ) Plaintiff alleges that under copyright law, Armageddon "entered the public domain in the United States in or about 1956 and [worldwide] in or about 2010." (Id. ¶¶ 8, 12.)

Plaintiff is "currently developing a motion picture project based upon" Armageddon "including the character of ‘Anthony Rogers' aka ‘Buck Rogers' first appearing therein." (Id. ¶ 9.) "In connection with its development of the motion picture project," plaintiff is "involved in the creation of a screenplay adaptation" of Armageddon , "which necessarily includes utilization and portrayal of the character ‘Buck Rogers.’ " (Id. ) Plaintiff's "development of the motion picture project is well underway," and plaintiff "has taken significant, concrete steps toward producing and releasing its film." (Id. ¶ 10.)

Plaintiff has "retained the services" and has a "fully executed writer agreement" with Flint Dille and Ed Neumeier to write the screenplay for the film based on an already completed written treatment thereof, which plaintiff has submitted for registration with the U.S. Copyright Office. (Id. ¶ 10.) "One of the screenwriters" of plaintiff's adaptation "happens to be" Robert Nichols Flint Dille ("Dille"), "one of two" beneficiaries of the Trust. (Id. ¶ 9.) Plaintiff has "retained the services of" and has a "fully executed producer agreement" with Susan Montford and Don Murphy as producers on the project. Plaintiff has "retained the services of" and has a "fully executed visual effects agreement" with Edward Irastorza as visual effects supervisor to start pre-visualization on the project. (Id. ¶ 10.)

Plaintiff has "preliminarily obtained firm interest from three major motion picture studios, Warner Brothers, Sony, and Legendary Pictures to fund the production of a major motion picture based on the project" with a budget "equal to or in excess of [$100 million], none of which can presently be pursued until the declaratory relief sought herein can be obtained." (Id. ) Plaintiff has attached "correspondence from Warner Bros.' Senior Vice President Jon Berg [and] Sony's then–President of Production Michael Deluca ... expressing firm interest in the motion picture project." (Id. ) Plaintiff has attached correspondence from Legendary Pictures' Executive Vice President Cale Boyer expressing firm interest in the motion picture project "but declining to move forward with the project due to the litigation threats and claims of ownership by The Dille Family Trust." (Id. )

Plaintiff "publicly announced its development of the motion picture project based upon" Armageddon at "Comic–Con in San Diego, California in July 2015." (Id. ¶ 11.) According to the second amended complaint, "[s]ince [plaintiff's] public announcement regarding its motion picture project and appearance of a Deadline Hollywood article to the same effect in June 2015" Dille received a voicemail in California from the Trust's counsel "threatening to sue" plaintiff, Murphy, and "its affiliates in connection with the [Armageddon ] project in ‘every court in the land.’ " (Id. ¶ 15.) The Trust's counsel "informed [Dille] that he was [at] Comic–Con but would be leaving the convention early ‘to sue them.’ " (Id. ¶ 14–15.)

"At or about such time," the Trust's counsel and its "licensing representative" Jane MacGregor ("MacGregor") called plaintiff in California "emphatically instructing [plaintiff] and its affiliates to cease and desist from developing the motion picture project based upon [Armageddon ]" and "making similar threats to sue if such demands were not complied with." (Id. ¶ 16.) MacGregor is the "licensing agent" for the Trust "responsible for negotiating all film and television deals on its behalf, including deals for character licensing...." (Id. ) During this call, the Trust's counsel asserted that the Trust "had not given [plaintiff] or anyone affiliated with it permission to license or use any elements under the ‘Buck Rogers Universe,’ including [Dille], and that "the copyright in [Armageddon ] was owned by [the Trust]." (Id. ¶ 17.) The Trust's counsel "concluded this call by indicating that unless the demand to ‘cease and desist’ was complied with, immediate legal action seeking injunctive relief under copyright and trademark would be initiated against [plaintiff], its president [Murphy], and their affiliates, including [Dille]." (Id. )

"On or about July 28, 2015," Dille's counsel received a letter in California signed by defendant on behalf of the Trust. (Id. ¶ 19.) In the letter, defendant asserted that the Trust "had not given permission or license...