Star Cable NA, INC. v. Total Cable USA LLC. et al

Filing 85

MEMORANDUM AND ORDER denying 81 Motion for Summary Judgment and denying 82 Motion for Summary Judgment. For the foregoing reasons, Defendants have failed to demonstrate that summary judgment is warranted and both motions for summary judgment are DENIED. The parties shall file a joint pretrial order within 14 days of this order. So Ordered by Judge Sterling Johnson, Jr on 2/12/2020. (Love, Alexis)

UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF NEW YORK
-X

STAR CABLE NA,INC.,
16 CV 4067(SJ)

Plaintiff,
V.

O
MEM' RANDUM
AND ORDER

TOTAL CABLE USA LLC,et al,
Defendants.
-X

APPEARANCES

DANIEL JOHN LEFKOWITZ
320 New York Avenue

Huntington, NY 11743
[phone]
Attorneyfor Plaintiff
HOGAN & CASSELL

500 North Broadway,Suite 153
Jericho, NY 11753

[phone]
By: Michael D. Cassell
Shaun K. Hogan
Attorneysfor Plaintiff
SATISH K. BHATIA

38 West 32nd Street, Suite 1511
New York, NY 10001

[phone]
Attorneyfor Defendants

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JOHNSON,Senior District Judge:

This is an unauthorized publication or use of commu rdcations action

brought pursuant to 47 U.S.C.§ 605. Plaintiffs Second Amended

Complaint("SAC)alleges that Total Cable USA LLC("Total Cable USA")

and IStopMedia and Entertainment,Inc. d/b/a Radiant IFI\^("IStop")
(collectively "Defendants") distributed programming servic 2S in
contravention of Plaintiffs exclusive rights to air those programming

services in the United States via Internet Protocol Television ^"IPTV"). The
t

services in question are Bangladeshi TV channels,specifically: 1)
Independent TV,2)Jamuna TV,3)Channel 16,4) My TV,5) Asian TV,6)

Bangla Vision,7)Ekushey TV,and 8)Somoy TV (collectively ^he "Exclusive
Services"). Plaintiff seeks enjoinment of the Defendants frora utilizing the
Exclusive Services and monetary damages. Before this Cour:are motions

for summary judgment by the Defendants. Based on the submissions of the
parties and for the reasons stated below,both motions for sc inmary
judgment are DENIED.

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1.

Background Facts^

Star Cable provides subscription video services to its clients through

the internet via IPTV. Its services include hundreds of chamjiels including

the Exclusive Services listed above. Star Cable claims to havejcontracted
with each of the Exclusive Services providers individually foi* the exclusive
I

rights to distribute these channels in the United States and Canada. In
exchange for the distribution rights, Star Cable has paid and continues to

pay license fees to the content owners. Star Cable alleges the if Defendants

Total Cable USA and IStop each actively advertise and rediuilribute the
w

Exclusive Services to their customers without authorization,

^Dkt. No.38 at

^22.)

Defendant Total Cable USA was incorporated on Octaber 20,2013

and dissolved in May 2016. However,Star Cable brings the instant action
on the premise that Total Cable USA continues to operate alid distribute the
Exclusive Services under the name "Total Cable BD."

Historical website data shows that a company holding itself out as
"Total Cable" operated a website at the URL "totalcableusa

dm," that sold

i
subscription internet television packages similar to the m^od(j^ described

^ Unless otherwise stated, all facts are taken from the complaint, the parties' submissions,
and representations before this Court.
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above as late as May 7,2016. However,by at least August 17,|2016—shortly
after Total Cable USA had dissolved—the same website hac changed the

logo on its homepage to instead read "Total Cable BD" and langed its
contact email address to "[e-mail]." All other information on
ut
the website remained virtually identical, including the "Abci Us"

description which begins:"Total Cable USA is leading IPTV providers to

the Bangladeshi community in the USA and Canada."
An August 17,2016 search revealed that the URL

"totalcableusa.com" was registered to a man named Habib Rahman,at the
phone number(646)474-0418, and address 15 Westmoylan

,ane, Coram,

NY 1127. That URL is no longer operational, however,the URL
"totalcablebd.com" was created in 2015 and registered to the exact same

person, phone number,and address. Rahman was also found in a Southei
District of New York lawsuit to be "a representative of Total Cable[USA]
LLC." Asia TV USA, Ltd. V. Total Cable USA LLC,2018 WL 1(»26165(S.D.N.Y

Mar. 29, 2018). Total Cable USA denies ownership of the we osite and claims

that they never operated any website.(Bhatia Aff. at|f 11.)
Additionally, the physical address that both websites

ere

registered to is the same address of process registered with tbie New York
Department of State for Total Cable USA.(Opp. to Total Cable at Ex. N.)

Total Cable USA's Department of State registration also lists :he company's
CEO, Ahmodul Barobhuiya, as the appropriate person for s ervice.(Id.)
11.

Legal Standard

A party moving for summary judgment has the burden!of establishing
that there exists no genuine issue of material fact and that the moving party

is entitled to judgment as a matter of law. See Fed. R. Civ. P.56(c); Anderson

V. Liherty Lobby, Inc., 477 U.S. 242, 250 (1986); Ford v. Reynolds, 316 F.3d 351,

354(2d Cir. 2003). Material facts are those that may affect th(2 outcome of the
case. See Anderson,477 U.S. at 248. An issue of fact is considered "genuine"
when a reasonable finder of fact could render a verdict in fivor of the non-

moving party.(Id.) In considering a summary judgment moiipn,"the court's
responsibility is not to resolve disputed issues of fact but tc assess whether
there are any factual issues to be tried, while resolving cimbiguities and
drawing reasonable inferences against the moving party." Knight v. U.S. Fire
Ins. Co.,804 F.2d 9,11 (2d Cir. 1986)(citing Anderson,477 U.3. at 248). If the
Court recognizes any material issues of fact,summary judgment is improper,
and the motion must be denied. See Eastway Constr. Corp. v. City ofNeio York,
762 F.2d 243, 249(2d Cir. 1985).

If the moving party discharges its burden of proof under Rule 56(c),

the non-moving party must then "set forth specific facts shcv[ring that there

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is a genuine issue for trial." Fed. R. Civ. P. 56(e). The nc n-moving party
opposing a properly supported motion for summaryjudgment"may not rest
upon mere allegations or denials of his pleading." Anderson

4 U.S. at 256.
77

Indeed, "the mere existence of some alleged factual dispu e

between the

parties" alone will not defeat a properly supported motion for summary
judgment. (Id. at 247-48.) Rather, enough evidence mus

favor the non-

moving party's case such that a jury could return a verdict in its favor. Id. at
248; see also Gallo v. Prudential Residential Servs., Ltd., 22 F.3d 1219,1224 (2d

Cir.1999)("When no rationaljury could find in favor of the n|onmoving party
because the evidence to support its case is so slight, there is itip genuine issue

of material fact and a grant of summary judgment is proper.").
III.

Discussion

r^i
As an initial matter, defendants' motions for summa: judgment do
not include a legal memorandum as required by Local Rule 7.1 or a rule
hemselves, are
56.1 statement. Both of these failures by counsel,in and of t'

proper grounds to deny the motions. See Local Rule 56.1 ("failure to
submit such a statement may constitute grounds for denial cf the motion.");

Cea V. Access 23 TV,2015 WL 5474070(S.D.N.Y. Sep. 15,20151)("The failure
to submit a memorandum of law,standing alone,is sufficier t cause for

granting or denying a motion. It is not necessary to reach the merits.")

(citations and quotations omitted); Corbley v. County ofSujfoik,45 F. Supp.

3d 276(E.D.N.Y. 2014)(''The Court finds that Plaintiff's faihiie to provide a
statement of undisputed facts is fatal to its motion for summary judgment,
and therefore the motion is denied on this basis.); United States v. Katz, 2011

WL 2175787(S.D.N.Y 2011)(denying motion for summary juilgment

because party submitted affidavits rather than a rule 56.1 stcitLment);
Wenzhou v. Wanli Food Co. v. Hop Chong Trading Co., 2000 WI.964944
I

(S.D.N.Y. July 11,2000)(denying motion for summary judgra^nt for failure
accompanying legal memorandum). But even putting aside

tj\ese glaring

procedural defects, the motions still fail.
A. Total Cable

Total Cable USA's motion for summary judgment is base d entirely on

its claim that it dissolved in May 2016, declared bankruptcy,and never

distributed any of the Exclusive Services.(Satish Bhatia Affii*mation in
.")atr2.)
Support of Total Cable USA's Motion to Dismiss("Bhatia Alf
Total Cable USA claims that "Plaintiff is confused with the Words'Total

Cable'" as "there are many corporations that start with the vnords "Total
Cable."(Bhatia Aff. If 9.) Defendant goes so far as to say that Total Cable
USA and Total Cable BD have "no[] relation whatsoever"(Id at If 10)and
that defendants are "not familiar with Total Cable Bd [sic]
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m.at If 11)

Accordingly, Defendant argues, there is no genuine dispute of material fact
because Plaintiffs claims pertain only to Total Cable BD,an entirely distinct
entity.

Unsurprisingly,Star Cable's position is that Total Cable

^SA and Total

Cable BD are effectively the same company. In response to tle instant

motion. Star Cable argues that "there is a clear issue of fact 2s to whether
;

Total Cable is still operating, albeit now under the name Total Cable BD.
(Star Cable's Opposition to Total Cable's Motion to Dismiss ('fOpp. to Total
Cable") at 1.) This Court agrees.

While the degree to which Total Cable USA and Total C able BD are in
fact connected is unclear, the record is rife with reasons to doubt Total

I
Cable USA's claim that there is "no relation whatsoever" beIvleen the two
businesses.(Bhatia Aff. Jf 10.)

Plaintiffs have demonstrated a strong link between the o aerators of

"totalcableusa.com" and the entity Total Cable BD. While Tc tal Cable USA

denies creating this website or any other (Bhatia Aff. at[f 11) it would be
reasonable to disbelieve this claim. The domain "totalcableufea.com," which

later became the website for Total Cable BD,was registered

o a Habib
[

Rahman—a known representative of Total Cable USA. See A sL TV USA,
2018 WL1626165 at *3. Additionally,the website was registolled to a

physical address associated with Total Cable USA,as prove :i by the
company's registration with the New York Department of State(Opp. to

Total Cable at Ex. N.)The same is true for the domain "totalcablebd.com,"
which was created later in time.(Opp. to Total Cable at Ex. 1^..)

Additional facts outline, supra,lend support to the theory that the

"totalcableusa.com" domain belonged to Total Cable USA,ialluding
content on the site relating to Total Cable,Total Cable USA, and Total Cable
BD.

There also appears to be overlap among key executives of both

companies. Defendant Total Cable USA argues in its Reply that both web

domains actually belong to yet another company called Lalcrl TV Inc.
("Lalon TV"),and thereby cannot belong to Total Cable US/l [Total Cable's

Reply in Opposition to Plaintiff's Response ("Total Cable Remy")atf 13.) If
I

this is in fact true, this Court is troubled by Barobhuiya's dejjosition

testimony in which he claimed he was"not familiar with To :al Cable Bd
[sic]." (Bhatia Aff. At If 11.) Barobhuiya was found to be the CEO of both
I

Total Cable USA LLC and Lalon TV in Asia TV USA, Ltd. v. Total Cable USA

LLC. 2018 WL1626165 *3("Barobhuiya is the CEO of both Total Cable
[USA]LLC and Lalon TV,and the address for service of process is the same
for both companies.")

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Plaintiffs allege that''defendants seem to be engaged in a scheme to
evade detection of their proper name and ownership."(SAC!at|f 6.) While
I

the full merits of this argument are not clear at this stage, th(ire certainly

remains a genuine dispute of material fact as to who is operating Total
Cable BD. Defendant Total Cable USA and its executives haye far from

exonerated themselves from that charge and for that reason,their motion
for summary judgment is dismissed
B. IStop

With the exception of Somoy TV,IStop does not deny di Jtributing the
Exclusive Services.(Bhatia Affirmation in Support of IStop'ji

Vlotion for

Summary Judgment("Bhatia IStop Aff.") atf 4.) Rather,ISt3p's motion for

summary judgment is based on its position that Star Cable does not retain

exclusive rights to distribute the Exclusive Services and that IStop has sold
access to the channels in accordance with its own written ag]eements with
the content owners. {Id. at If 2.) IStop's motion falls far short of proving its

position as a matter of law. The Court shall address each channel in turn
1. Independent TV

IStop alleges that Star Cable's exclusive contract with Independent
TV was for three years and expired in 2017.(Bhatia IStop Af;:., at If 6.) It

argues that Plaintiff"has not provided any other agreement showing that
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the [contract] was ever renewed."(Id.) However,IStop's po sition is belied

by the fact that Paragraph 2 of the relevant contract clearly states that the
"[ajgreement automatically shall renew for additional three- year Terms,

unless either party provides at least 90 days written notice to the other

party..."(Plaintiffs Opposition to IStop's Motion for Sumnr^ry Judgment
C'Qpp. to IStop")at Ex. A,|f 2.)IStop offers no evidence whatsoever to

demonstrate that the agreement has ended in a manner consistent with the
contract.

IStop also points to a contract it allegedly entered into with

Independent TV in 2013 for a three-year period, with a l-yee r automatic

renewal provision.(Bhatia IStop Aff. at Ex. Q.)Star Cable challenges the
authenticity of this contract based on its own agreement witli Independent
TV,demonstrating an additional clear dispute of material fa::. (Plaintiffs
Rule 56.1 Statement as to IStop's Motion for Summary Judgnient
("Plaintiffs IStop Rule 56 Statement") at|f 18.)
2. Jamuna TV

IStop similarly asserts that Star Cable's contract with [amuna TV
ended in 2017.(Bhatia IStop Aff. atf 7.) Again,this position is contradicted

by the express terms of Star Cable's contract with Jamuna T\^ which state

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that the agreement automatically renews at the end of the ttree-year period
unless properly terminated by one of the parties.(Opp. to IStop at Ex. B.)
IStop also attaches a letter supposedly from a Jamuna TV executive

affirming that IStop is their client and that''[n]o other organization has any
valid exclusive rights with Jamuna...''(Bhatia IStop Aff. at Ex. G.)This
letter, addressed "TO WHOM IT MAY CONCERN," is not authenticated,

notarized, or certified in anyway. As such, it is inadmissible evidence and
will not be considered for purposes of this motion for summary judgment.
I

See F.R.C.P. 56(c)(4)("affidavit or declaration used to suppoi tjor oppose a
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."); Raskin v. Wyatt Co.,125 F.3d 55,66(2d
Cir. 1997)("only admissible evidence need be considered by the trial court
in ruling on a motion for summary judgment").
3. Channel 16

IStop asserts, based on the deposition of Saiful Siddique, that

Channel 16 is "no longer in circulation and it is not broadcasdng."(Bhatia
IStop Aff. at If 7.) It also provides a copy of a contract betwee ri IStop and

!
Lalon TV for a period of ten years which predates Star Cable s contract with

Channel 16.(Id.) Star Cable challenges Siddique's "unsuppoijted claim" that
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Channel 16 is no longer in business, creating yet another factual dispute.
(Plaintiffs IStop Rule 56 Statement at|f 7.) As IStop has not offered any
evidence outside a conclusory statement that Channel 16 is no longer

operating, this issue of fact is still clearly in dispute. Further , even if
Channel 16 was no longer in business,IStop does not state \^hen it stopped
operating or if its closure predated the relevant date range of this lawsuit.
4. mytv

IStop also provided a letter addressed ''To Whom It May Concern,"
from a mytv executive stating that Star Cable "has no valid legal agreement

with [mytv]," and "has absolutely no rights to broadcast or rdpresent mytv
channel anywhere in the world."(Bhatia IStop Aff. at ex. I.)

ike the

proffered Jamuna letter, this letter is not authenticated, notaiijzed,or
certified in anyway. As such,it is inadmissible evidence and will not be
considered for purposes of this motion for summary judgment. F.R.C.P.
56(c)(4); Raskin,125 F.3d at 66.
5. Asian TV

IStop submitted two contracts in its motion that it supposedly
entered into with Asian TV for rights to distribute in North.

merica. One

contract, dated November 20,2014, is for the exclusive right

o distribute

for three years.(Bhatia IStop Aff. at Ex. K.)The other is dated June 6,2016
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and is for the non-exclusive right to distribute for three years,(Bhatia IStop

Aff. at Ex. L.) Star Cable disputes the authenticity of both these documents
for two reasons.(Plaintiffs IStop Rule 56 Statement at|f 13.) First, Star
Cable claims that it entered into an agreement for the exclus ive rights to

distribute Asian TV's content for an eight-year period begin]ling November
25,2014.(Id.) Second,Star Cable points out that IStop offers rlo explanation

as to why it had negotiated for exclusive distribution rights or three years

only to renegotiate, not even two years later,for non-exclusi /e distribution

rights.(Id.) There may be a legitimate reason for this, howev 2r, there clearly
remains a dispute as to the authenticity of the offered contra:ts.
6. Bangia Vision

With regards to Bangia Vision,IStop offered yet anot,

er letter

addressed,"To Whom It May Concern," this time from a Bangia Vision

executive.(Bhatia IStop Aff. at Ex. H.)The letter states that Star Cable has
"no valid agreement or the rights to broadcast/represent

BANGLAVISION."(Id.) Once again,the letter is not authent dated,
notarized, or certified in anyway. As such, it is inadmissible (Evidence and

I
will not be considered for purposes of this motion for summary judgment.
F.R.C.P. 56(c)(4); Raskin,125 F.3d at 66.

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IStop also submits a contract it supposedly entered iiLt|o with Bangla
Vision for distribution rights for a three-year period beginniig September

23,2014.(Bhatia IStop Aff. at Ex. M.)Star Cable points out, aijid it is clearly
apps" and

stated in the title, that this contract is only applicable to"mo

thereby irrelevant to Star Cable's IPTV claim.(Opp. to IStop at 10-11.)

Accordingly,the documents submitted by IStop fall far shoit of

demonstrating it should be granted summary judgment with fegard to
Bangla Vision.
7. Ekushey TV

IStop argues that Star Cable has no valid distributioii agreement
with Ekushey TV.In support of this position,IStop submitte c

a one-

sentence letter from an Ekushey executive to Star Cable, dated August 23,
2016.(Bhatia IStop Aff. at Ex.].) The letter supposedly terminates the
distribution agreement between Star Cable and Ekushey. Star Cable
challenges the authenticity of this letter based on its utter fai ure to comply
with the procedures outlined in the contract for terminating the agreement.

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(Plaintiff's IStop Rule 56 Statement at|f 11.) Again,IStop's

submission clearly fails to sustain its burden of proof for suijrmary
judgment.2
8. Somoy TV

IStop claims that it is not involved in the sale or distribution of
Somoy TV.(Bhatia IStop Aff. at[f 4.)In support of this posit on,IStop
offers no evidence other than a blanket denial.(Id.) Unsurpr singly. Star

Cable disputes the claim, highlighting yet another dispute as to a material
fact in this case.(Plaintiffs IStop Rule 56 Statement at|f 4.)
IV.

Conclusion

For the foregoing reasons. Defendants have failed to demonstrate
that summary judgment is warranted and both motions for ^ummary

judgment are DENIED.The parties shall file a joint pretrial dfder within 14
days of this order.
SO ORDERED.

s/ Sterling Johnson, Jr.

Dated: February 12,2020
Brooklyn, NY

Sterling J

2 Star Cable refers to this channel as "Ekhusey" while Defendants refer tc it as "Ekushey."
The parties shall clarify the proper spelling of this company to the Court and confirm the
correct company is in dispute in their joint pre-trial order.
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