Whitmill v. Warner Bros. Entertainment Inc.

Filing 51

RESPONSE to Motion re 47 Emergency MOTION to Expedite Scheduling Conference filed by Defendant Warner Bros. Entertainment Inc.. (Attachments: # 1 Exhibit 1)(Hemeryck, Sondra)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MISSOURI
EASTERN DIVISION
S. VICTOR WHITMILL,
Plaintiff,
v.
WARNER BROS. ENTERTAINMENT INC.
Defendant.

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Civil Action No. 4:11-cv-752
Judge Catherine D. Perry

WARNER BROS.’ MEMORANDUM IN OPPOSITION
TO PLAINTIFF’S PROPOSED SCHEDULING PLAN
Defendant Warner Bros. Entertainment Inc., by its attorneys, submits this memorandum
in opposition to Plaintiff S. Victor Whitmill’s proposed scheduling plan calling for a trial on
Plaintiff’s request for a permanent injunction barely two months from now. (See Doc. 47, Ex. 1).
As set forth below, the extremely aggressive schedule that Plaintiff seeks to impose is not
warranted by the circumstances of this case. If the parties are unable to resolve their dispute,
Warner Bros. does not intend to make any use of the allegedly infringing tattoo after the film
ends its run in the theaters because Warner Bros. will digitally alter the film to substitute a
different tattoo on Ed Helms’s face. As a result, there is no reason for the highly accelerated trial
Plaintiff has asked this Court to hold on Plaintiff’s request for a permanent injunction.
Moreover, the schedule Plaintiff proposes is unreasonable and would unfairly and
unnecessarily deprive Warner Bros. of its ability to properly develop and present its defenses to
Plaintiff’s claim of infringement. Warner Bros. is willing to proceed with this case on an
expedited basis in accordance with the rules of this Court, and has submitted its own proposed
scheduling plan that would accomplish that goal while ensuring that the case will proceed in an
orderly fashion so that neither party is deprived of its rights. Warner Bros.’ proposed scheduling

plan, a copy of which is attached hereto as Exhibit 1, would have this case ready for trial by
February 2012 – two months earlier than the time period provided for in the Local Rules
Expedited Case Management Track. While far from ideal for Warner Bros., Warner Bros.
proposed this schedule as a compromise that would protect the rights of all the parties. Warner
Bros. respectfully requests that this Court decline to enter the unfair, unreasonable and
unnecessarily expedited schedule that Plaintiff seeks to impose and instead enter the proposed
scheduling order attached as Exhibit 1.
Argument
I.

THE HIGHLY ACCELERATED SCHEDULE PROPOSED BY PLAINTIFF IS
UNNECESSARY.
On the day the Court issued its ruling on Plaintiff’s motion for a preliminary injunction,

Warner Bros.’ counsel, on their own initiative, met with Plaintiff’s counsel to address how the
parties might attempt to resolve this dispute. During that meeting, counsel agreed upon a
framework for attempting to resolve the dispute and also discussed the possibility of mediation if
those efforts are not successful (which Warner Bros. supports).1
Warner Bros.’ counsel informed Plaintiff’s counsel during their May 24 meeting that if
the parties are not able to resolve their dispute, Warner Bros. will digitally change the tattoo on
the face of actor Ed Helms for the home video release of “The Hangover Part II” (“Hangover
II”).2 During a telephone conversation with Plaintiff’s counsel the next day, Warner Bros.’

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If this dispute is not resolved within the next two to three weeks, Warner Bros. will
have to spend the funds that would otherwise be available for settlement to digitally alter the film
to substitute a different tattoo on Ed Helms’s face. Accordingly, Warner Bros. requests that the
Court enter an order pursuant to Local Rule 16-16.02 referring this case to mediation, with the
mediation to take place no later than June 17, 2011 if the parties are unable to resolve this
dispute on their own.
2

Digitally changing the tattoo was not a viable option for the theatrical release of the film
due to both the amount of time the process will take and the fact that thousands of new prints
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counsel reiterated that if the parties are not able to resolve their dispute then Warner Bros. will
digitally change the tattoo for the home video release of “Hangover II” (including the DVD and
video-on-demand releases), thereby eliminating any need for an expedited trial on Plaintiff’s
request for a permanent injunction. After Plaintiff’s counsel nevertheless sent Warner Bros.’
counsel a proposed schedule for an expedited trial on Plaintiff’s request for a permanent
injunction, Warner Bros.’ counsel again advised Plaintiff’s counsel in writing that Warner Bros.
will change the tattoo for the home video release if the parties do not resolve their dispute.
Plaintiff’s scheduling plan proposes an extremely abbreviated period of limited discovery
leading to a two-day jury trial on liability and Plaintiff’s request for a permanent injunction that
would begin on August 8, 2011. (Doc. 47, Ex. 1.) There is no need for the parties and the Court
to rush to a trial under the circumstances of this case. By August 8 the film will already have
been showing in theaters for more than ten weeks. Thus, the alleged harm to Plaintiff caused by
theatrical exhibition of the film will already have occurred and an injunction would do nothing to
remedy it.

See, e.g. Berlent v. Focus Features, LLC, No. 06 Civ. 2834(SCR), 2006 WL

1594478, at *2-*3 (S.D.N.Y. June 8, 2006) (finding that plaintiff failed to demonstrate that he
would suffer any irreparable harm if continued sale and exhibition of motion picture “Brokeback
Mountain” were not enjoined because any irreparable harm plaintiff would suffer had already
occurred); Scott-Blanton v. Universal City Studios Prods. LLLP, 495 F. Supp. 2d 74, 79-80
(D.D.C. 2007) (similar).3 Moreover, because if this case goes forward Warner Bros. will change

would have had to be created and shipped to theaters. The home video release is currently
scheduled for early December 2011, which would allow Warner Bros. sufficient time to make
the change if it becomes necessary.
3

Although these cases involved preliminary injunctions, eBay makes clear that
irreparable harm is a prerequisite to a permanent injunction as well. See eBay Inc. v.
MercExchange, L.L.C., 547 U.S. 388, 391 (2006).

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the tattoo for the home video release, there is no need (indeed, there would be no basis) for a
permanent injunction directed to that or subsequent releases of the film.4
Plaintiff is wrong when he argues that the harm the Court found that an injunction would
impose on the innocent theater owners “has been eliminated.” (Doc. 47 ¶ 8.a.) If the theaters are
still showing the film, an injunction will cause them even greater harm because in many
instances the theaters’ share of the box office receipts increases over the course of the film’s run.
Plaintiff is also wrong when he argues that the harm to Warner Bros. has been eliminated.
(Id. ¶ 8.b.) If the exhibition of the film were enjoined, Warner Bros. stands to lose substantial
box office receipts, which will negatively impact Warner Bros.’ ability to recover the costs of
developing, promoting and distributing the film.5

Furthermore, because it would not be

4

Because the Copyright Act has no extraterritorial effect, exhibition of the film outside
the United States does not violate the Copyright Act and consequently cannot be enjoined. See
Palmer v. Braun, 376 F.3d 1254, 1258 (11th Cir. 2004) (stating that “federal copyright law has
no extraterritorial effect, and cannot be invoked to secure relief for acts of infringement
occurring outside the United States”); Vergara Hermosilla v. The Coca-Cola Co., 717 F. Supp.
2d 1297, 1306 n.7 (S.D. Fla. 2010) (stating that “[t]his Court could not issue an injunction for
infringement occurring outside the United States”); Danjaq LLC v. Sony Corp., 49 U.S.P.Q.2d
(BNA) 1341, 1998 WL 957053 (C.D. Cal. 1998) (stating that “district courts may not enjoin a
defendant’s foreign activities under the U.S. Copyright Act”); CyberMedia, Inc. v. Symantec
Corp., 19 F. Supp. 2d 1070, 1079 (N.D. Cal. 1998) (stating that “[t]here appear to be no reported
cases . . . in which the extraterritorial manufacture and distribution of infringing products was
enjoined on the basis of copyright infringement occurring within the United States” and
declining to enter such an injunction in the case before it) (emphasis omitted).
5

Plaintiff notes in his motion that, according to press reports, “Hangover II” grossed
$134 million in its first five days in theaters. (Doc. 47, ¶ 8.b.) As this Court knows from the
declarations previously submitted by Warner Bros. and the testimony at the preliminary
injunction hearing, that amount is still substantially less than the amount that was spent to
produce, promote and distribute the film. In addition, Warner Bros. disputes Plaintiff’s
assumption that the success of the film to date is attributable to the use of the tattoo in
advertising for the film. (Id. n.1.) Warner Bros. fully expects to show at trial that the sales of
tickets to “Hangover II” – as with any sequel – were driven by the popularity of the first movie
and the public’s interest in the three main characters from the first movie, who appear again in
“Hangover II,” not by Helms’s tattoo.

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commercially feasible for Warner Bros. to re-launch the film at a later date if the injunction were
subsequently reversed, Warner Bros. would never be able to recover those lost revenues.
Plaintiff’s counsel have taken the position in communications with Warner Bros.’ counsel
that, even if Warner Bros. changes the tattoo for the home video release of the film, Plaintiff
would still be entitled to a permanent injunction requiring Warner Bros. to recall and destroy all
existing prints, advertising and promotional materials. Even if Plaintiff would be entitled to such
an injunction if he prevailed on his claims (which Warner Bros. disputes), there is no need for an
expedited schedule and trial with respect to such relief. The theaters are contractually required to
return the prints of “Hangover II” to Warner Bros. following the film’s theatrical run. Warner
Bros. as a matter of standard practice will keep a few prints and destroy the rest, but Warner
Bros. will not exhibit or otherwise exploit the current version of the film absent an agreement
with Plaintiff authorizing it to do so. The theaters remove the posters and banners used to
advertise the film in the theaters as soon as the theatrical run has ended and replace them with
advertising for upcoming films. Warner Bros. paid for outdoor advertising space (billboards, bus
shelters and the like) only through May 30, 2011, and other media advertising (radio, television
and print ads) is scheduled to end at the latest by June 17, 2011.6 The 7-Eleven Hangover II
promotion ended on May 31, at which time 7-Eleven started removing “Hangover II” materials
from its stores.
In sum, Warner Bros. does not intend to make any use of the allegedly infringing tattoo
after the end of the film’s theatrical run (which this Court already has declined to enjoin) if the

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Because Warner Bros. does not own or control the outdoor advertising space, it is
possible that some of the outdoor advertising will remain up after May 30, 2011 if the owner of
the space does not have other advertising with which to replace it.

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parties are unable to resolve their dispute. Accordingly, there is no reason for an accelerated trial
on Plaintiff’s request for a permanent injunction.
II.

PLAINTIFF’S PROPOSED SCHEDULING PLAN IS UNREASONABLE.
In addition to being unnecessary, Plaintiff’s proposed scheduling plan is unreasonable,

unrealistic and will impose undue burdens on the Court, the parties and their counsel.
As noted, Plaintiff proposes a discovery schedule that is extremely limited in both scope
and time, despite that fact that Plaintiff is proposing a trial on the merits of Plaintiff’s claim at
the end of that truncated discovery period. For example, Plaintiff asserts that there is no need for
expert witnesses with respect to Plaintiff’s infringement claim. (Doc. 47, Ex. 1.) Warner Bros.,
however, expects to present expert witnesses. (One of the issues on which Warner Bros. expects
to conduct discovery and present expert testimony is whether Tyson’s tattoo is derivative of preexisting Maori designs.) Plaintiff’s proposed schedule allows no time for expert discovery.
Warner Bros. also expects to conduct third-party fact discovery, but only three depositions for
each side would be allowed under Plaintiff’s proposed schedule.
In addition, Plaintiff’s proposed schedule would require Warner Bros. to respond within
two days of the Court’s hearing on Plaintiff’s Emergency Motion to Plaintiff’s expedited
discovery requests, which are in any event improper because there has been no 26(f) conference
and the Court previously denied Plaintiff’s motion for expedited discovery (Doc. 23).7
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At 5:30 p.m. on Friday, June 3, Plaintiff filed an Emergency Renewed Motion for
Expedited Discovery (Doc. 50). That Motion seeks to require Warner Bros. to respond to
comprehensive discovery concerning Plaintiff’s copyright claim and Warner Bros.’ defenses,
including the production of voluminous documents, two days from now. For example, Plaintiff’s
Interrogatory No. 1 asks Warner Bros. to identify every basis on which it claims the use of the
tattoo was legal (i.e., all of its defenses), identify all documents that relate to those defenses and
identify all people with knowledge of those defenses. The document requests ask Warner Bros.
to produce all documents related to its defenses and “all documents, communications and things
evidencing or relating to your advertising, promotion and marketing of the Movie, without
limitation, posters, print advertising, trailers, radio and television advertisements, Internet
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Plaintiff’s proposed schedule would also require the parties to exchange 26(a)(1) disclosures
within two days of this Court’s hearing on Plaintiff’s Emergency Motion, would force Warner
Bros. to serve all of its written discovery two days after that and would give Warner Bros. only
fourteen days to respond to any additional discovery that Plaintiff decides to serve. Plaintiff’s
proposed schedule would limit Warner Bros. to ten interrogatories (even though Plaintiff’s
expedited discovery requests include approximately thirty interrogatories counting the sub-parts),
would give the parties only four weeks from the receipt of written discovery responses to
conduct all depositions and would allow Warner Bros. only two days to respond to witness lists,
exhibits, deposition designations and motions in limine. In short, Plaintiff’s proposed schedule
imposes unreasonably short deadlines that will deprive Warner Bros. of a fair opportunity to
develop evidence and present its defenses, all in order to accommodate a highly accelerated trial
that is not justified by the circumstances of this case.
Warner Bros. also disputes Plaintiff’s contention that a jury trial on the merits of his
claim could be conducted in only two days. Warner Bros. believes that it would take a least
three days, not including the jury’s deliberations. Moreover, Plaintiff’s proposed schedule would
result in two jury trials being held months apart – one trial to decide liability, and a second trial
months later, after the parties have conducted the relevant discovery, to decide damages. Such
an approach plainly does not promote judicial economy, as Plaintiff argues, and it is not justified
by the facts of this case.8 As one court observed in denying bifurcation:

marketing, and examples of promotional merchandise.” (Id., Ex. 1.) Warner Bros. estimates that
it will take several weeks to collect and review these documents. It would be impossible for
Warner Bros. to respond to these requests in only two days.
8

Plaintiff claims that bifurcation is commonly granted in copyright cases, but cites only
two cases to support that contention. One of those cases, Ryan v. Carl Corp., No. C97-3873
FMS, 1999 WL 16320 (N.D. Cal. Jan. 13, 1999), was a purported class action in which the
plaintiffs sought certification of both liability and damages classes. The court concluded that it
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[D]ividing the ultimate resolution of a dispute into separate trials could inevitably
lead to additional discovery, more pre-trial disputes, empaneling a second jury,
deposing or recalling the same witnesses and the potential for multiple, additional
post-trial motions and appeals. Those probable consequences must be weighed
and therefore, “bifurcation should be particularly compelling and prevail only in
exceptional cases.”
Crown Packaging Tech., Inc. v. Rexam Beverage Can Co., 498 F. Supp. 2d 734, 736 (D. Del.
2007) (citation omitted); see also Data Gen. Corp. v. Grumman Sys. Support Corp., 795 F. Supp.
501, 503 (D. Mass 1992) (refusing to bifurcate liability and damages in copyright infringement
case); Fed. R. Civ. P. 42(b), Advisory Committee Note to 1966 amendment (stating that
bifurcation “is not to be routinely ordered”). To the extent there is concern about jury confusion,
it can and should be addressed by having a single jury and a single trial in which the jury first
hears and decides liability, and then hears and decides damages if liability is found.
Furthermore, the schedule that Plaintiff has proposed would impose enormous and unfair
burdens on Warner Bros.’ trial counsel, Fred Sperling and Sondra Hemeryck, as Plaintiff’s
counsel knew before they filed Plaintiff’s Emergency Motion. Mr. Sperling and Ms. Hemeryck
have an arbitration hearing scheduled for the last week of July with additional days during the
first two weeks of August. Indeed, as Mr. Sperling informed Plaintiff’s counsel, Mr. Sperling
and Ms. Hemeryck will actually be in trial on August 8, the day that Plaintiff proposes to begin
the liability trial in this case. (Plaintiff’s proposed schedule would also require Warner Bros. to
file its pretrial stipulation of facts, witness list, exhibit list, deposition designations and pretrial
memoranda during the last week of July when Plaintiff knows Mr. Sperling and Ms. Hemeryck
would be premature to address the issue of damages classes until liability had been determined,
and accordingly bifurcated the case. Id. at *4-*5. In the other case, Apple Computer, Inc. v.
Microsoft Corp., 821 F. Supp. 616, 630 (N.D. Cal. 1993), the court held, without any real
analysis, that it would bifurcate liability and damages rather than address defendants’ motions
relating to damages, profits and prejudgment interest before trial. Neither of those cases supports
bifurcation under the circumstances of this case, much less the highly accelerated trial on
liability that Plaintiff seeks.

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will be in trial.) Even apart from the time that Ms. Sperling and Ms. Hemeryck will spend
actually trying that case, they will need to spend substantial time preparing for the hearing before
it begins.
In addition, Ms. Hemeryck has an arbitration hearing in a different matter that is
scheduled for the last week of August. Discovery for that matter is scheduled to be completed by
July 29, and Ms. Hemeryck will need to spend time during the month of August preparing for
that hearing. Both Mr. Sperling and Ms. Hemeryck also have multiple depositions and summary
judgment papers that must be completed in other pending cases, cases that they have not been
able to work on due to the demands of preparing for the preliminary injunction hearing that was
held last week.9 Again, given the absence of any emergency in this case, there is no reason to
impose the enormous burden of Plaintiff’s proposed accelerated schedule on Warner Bros. and
its counsel.
Conclusion
For the foregoing reasons, Warner Bros. respectfully requests that this Court decline to
adopt Plaintiff’s proposed scheduling plan and instead enter the proposed scheduling plan
attached hereto as Exhibit 1. Given Warner Bros.’ representation that it will change the tattoo
for any post-theatrical release of the film if the parties are unable to resolve their dispute,
Plaintiff’s proposed schedule will serve no other purpose than to prejudice Warner Bros. This
case can be litigated efficiently without depriving Warner Bros. of its opportunity to properly
prepare its defense.

9

Warner Bros.’ counsel actively cooperated in the scheduling of a prompt hearing on
Plaintiff’s motion for a preliminary injunction immediately after Warner Bros.’ answer and
response were due, and they and Warner Bros. voluntarily provided documents that went beyond
what Plaintiff’s counsel told the Court they would need for the hearing.

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Dated: June 6, 2011

Respectfully submitted,

/s/ Sondra A. Hemeryck
Frederick J. Sperling
Sondra A. Hemeryck
SCHIFF HARDIN LLP
233 S. Wacker Dr., Suite 6600
Chicago, Illinois 60606
[e-mail]
[e-mail]
Mark Sableman
# 36276MO
THOMPSON COBURN LLP
One US Bank Plaza
St. Louis, Missouri 63101
[e-mail]
Attorneys for Defendant Warner Bros.
Entertainment Inc.

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CERTIFICATE OF SERVICE
The undersigned hereby certifies that on June 6, 2011, a true copy of the foregoing
Warner Bros. Entertainment Inc.’s Memorandum in Opposition to Plaintiff’s Proposed
Scheduling Plan was filed electronically with the Clerk of the Court to be served via operation of
the Court’s electronic filing system upon all counsel of record.

/s/ Sondra A. Hemeryck

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