Ivanova v. Columbia Pictures Industries, Inc.

217 F.R.D. 501, 2003 U.S. Dist. LEXIS 12858, 2003 WL 21710204
CourtDistrict Court, C.D. California
DecidedJune 9, 2003
DocketNo. CV 03-1033 DT (CWx)
StatusPublished
Cited by1 cases

This text of 217 F.R.D. 501 (Ivanova v. Columbia Pictures Industries, Inc.) is published on Counsel Stack Legal Research, covering District Court, C.D. California primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Ivanova v. Columbia Pictures Industries, Inc., 217 F.R.D. 501, 2003 U.S. Dist. LEXIS 12858, 2003 WL 21710204 (C.D. Cal. 2003).

Opinion

ORDER GRANTING DEFENDANT COLUMBIA PICTURES INDUSTRIES, INC.’S MOTION FOR RULE 11 SANCTIONS AGAINST PLAINTIFFS MARIO MORENO IVANOVA, THE ESTATE OF MARIO MORENO REYES AND THEIR COUNSEL TIMOTHY C. RILEY

TEVRIZIAN, District Judge.

I. Background

This action is brought by Plaintiffs Mario Moreno Ivanova and the Estate of Mario [503]*503Moreno Reyes (collectively, “Ivanova”) against Defendant Columbia Pictures Industries, Inc. (“Columbia”) for (1) unfair competition in violation of California Business and Professions Code § 17200 et seq., (2) copyright infringement in violation of 17 U.S.C. §§ 501, 506(a) and 18 U.S.C. § 2319, (3) breach of contract, (4) copyright infringement in violation of the 1996 Mexican Federal Copyright Law, (5) intentional interference with contracts, and (6) intentional interference with prospective economic advantage.

A. Factual Summary

The following facts are alleged in the Complaint:

Plaintiff Mario Moreno Invanova is the executor and successor-in-interest to the estate of his father, Mario Moreno Reyes, a famous Mexican actor, writer and producer better known during his lifetime by his film name “Cantinflas.” (See Complaint, ¶ 1.) The Cantinflas estate is the owner of the Mexican copyright to 20 Cantinflas films (“the 20 Pictures”). (See id.) Each of the 20 Pictures fell into the U.S. public domain years ago because of worldwide publication without copyright notice and failure to make registrations with the U.S. Copyright office during the first 28 year term. (See id. at ¶ 2.) Under 17 U.S.C. § 104A, U.S. copyrights were restored as of January 1,1996 to the “author” or “initial rightholder” as determined by Mexican law. (See id. at ¶3.) Cantinflas and his corporations were the authors of the 20 Pictures under Mexican law, and his estate succeeded to those rights upon his death. (See id.) The Cantinflas estate is the owner of the restored U.S. copyrights to these 20 classic Mexican films. (See id.)

The Cantinflas estate is also the owner of the Mexican copyright to 6 Cantinflas films (“the 6 Pictures”). (See id. at ¶4.) The Cantinflas estate is also either the sole owner or the 65% owner of the Mexican copyrights to 7 Cantinflas films (“the 7 Pictures”). (See id. at ¶ 5.) With respect to U.S. copyright ownership of the 7 Pictures, the Cantinflas estate is the sole owner of the U.S. copyrights. (See id. at ¶ 6.)

In addition, as a separate and independent basis for ownership of the Mexican copyrights to these films (the 20 Pictures, the 6 Pictures, and the 7 Pictures), the highest civil appellate court in Mexico ruled in favor of the Cantinflas estate following 3 years of litigation over ownership of these classic Mexican films. (See id. at ¶ 7.) On or about June 20, 1996, by a ruling of the First Collegiate Circuit Court of Mexico, the Cantinflas estate was adjudged the owner of the films at issue here. (See id.)

Columbia and/or its affiliates has distributed the 20 Pictures and the 6 Pictures under a claim of rights under a 1979 contract that required Columbia to pay 35% of the gross proceeds to Cantinflas and/or certain successors of Cantinflas. (See id. at ¶ 11.) Columbia has distributed the 7 Pictures under a claim of rights under an amalgam of old contracts. (See id. at ¶ 12.) Under those agreements, Columbia was entitled to distribution fees of between 15.5% and 25%, and Columbia paid Cantinflas or his successors the balance of the proceeds for many years. (See id.) Those contracts have all expired. (See id.)

Columbia has been distributing the 7 Pictures under a claim of rights under unspecified contracts and paying to Cantinflas or his successors/assigns between 75% and 87.5% of the gross proceeds, keeping the balance (12.5% to 25%) as its distribution fee. (See id. at ¶ 18.) The contracts pursuant to which Columbia distributed the films do not extend to television distribution and expired. (See id. at ¶ 19.) Against the written demands of the Cantinflas estate, Columbia distributed the 7 Pictures throughout the world through December 31, 2000 pursuant to the claimed rights under the limited licenses. (See id. at ¶ 20.) This distribution constitutes copyright infringement. (See id.)

In about June 2001, the Cantinflas estate sought to distribute the 7 Pictures and an additional Cantinflas picture via the medium of television throughout the world except Mexico and entered into a valid and enforceable contract for that purpose. (See id. at ¶ 22.) The Cantinflas estate stood to earn an advance of $150,000 plus in excess of $1,500,000 in revenue from a well-known Mexican distributor. (See id.) Columbia [504]*504had knowledge of the contract and the amounts that the Cantinflas estate expected to receive. (See id.) In about June and July-2001, Columbia claimed that it had rights to the 7 Pictures and the additional picture under the expired limited licenses; it communicated this claim along with threats to the Mexican distributor, and it made repeated threats to the Cantinflas estate regarding liability that the estate would face it if distributed its films. (See id. at ¶ 23.) These claims and threats caused the Mexican distributor to back out of the deal and breach its contract with the estate. (See id.)

In or about March 2001, Columbia sent correspondence, other communications and certain distribution statements to the Can-tinflas estate which indicated that Columbia had abruptly stopped all payments to the Cantinflas estate under the 1979 license agreement pursuant to which Columbia claimed it had the right to distribute the 20 Pictures and the 6 Pictures. (See id. at ¶ 24.) Columbia had no legal right under the 1979 license agreement to stop payments, and it made its announcement at that time for the specific purpose of letting the Cantinflas estate know that it was going to commence illegal financial starvation of the Cantinflas estate unless the estate settled the lawsuit between Columbia and the Cantinflas estate involving claims to the Cantinflas films at issue. (See id. at ¶25.) At that time in March 2001, Columbia suddenly claimed that it had the right to keep all proceeds from the 20 Pictures and the 6 Pictures to recoup its attorney’s fees which it would henceforth consider to be “distribution expenses.” (See id. at ¶ 26.) The contract pursuant to which Columbia claimed the right to distribute the 20 Pictures and the 6 Pictures did not permit such deduction. (See id.)

The Cantinflas estate entered into what is called in Mexico a “promise of contract” with Grupo Televisa S.A. (“Televisa”) in about December 1998 related to the distribution of the 20 Pictures, the 6 Pictures and the 7 Pictures in the nation of Mexico. (See id. at ¶28.) Under the promise of contract, Televisa was required to enter into a definite contract with the estate wherein the estate was to have earned in excess of $6,000,000 from distribution of its films entirely within the nation of Mexico.

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217 F.R.D. 501, 2003 U.S. Dist. LEXIS 12858, 2003 WL 21710204, Counsel Stack Legal Research, https://law.counselstack.com/opinion/ivanova-v-columbia-pictures-industries-inc-cacd-2003.