Dish Network L.L.C. v. ABC, Inc. et al

Filing 202

MEMORANDUM OPINION AND ORDER: NBCUs motion to transfer is granted. The Clerk of Court is requested to effectuate the transfer to the United States District Court for the Central District of California of only that portion of this action in which Plaintiff Dish asserts a claim against Defendant NBCU. NBCU's counterclaims in this action are dismissed, without prejudice, in favor of the affirmative breach of contract claims that NBCU has interposed in the California Action. This Memorandum Opinion and Order terminates docket entry no. 114. (Signed by Judge Laura Taylor Swain on 3/15/2013) (ft)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
-------------------------------------------------------x
DISH NETWORK, L.L.C.,
Plaintiffs,
-v-

No. 12 Civ. 4155 (LTS)(KNF)

AMERICAN BROADCASTING COMPANIES,
INC. et al.,
Defendants.
-------------------------------------------------------x
MEMORANDUM OPINION AND ORDER
Before the Court is a motion by NBCUniversal Media, L.L.C. (“NBCU”), seeking
an order pursuant to 28 U.S.C. § 1404(a), transferring DISH Network L.L.C.'s (“Dish”) sole
remaining claim against NBCU to the Central District of California. NBCU further requests
that, upon such transfer, the Court dismiss NBCU's counterclaims in this action, without
prejudice, in favor of the affirmative breach of contract claims that NBCU has interposed in the
action titled NBC Studios, LLC, et al. v. Dish Network Corporation and Dish Network L. L.C.,
No. 12 Civ 4536, in the Central District of California (the “California Action”). The Court has
thoroughly considered the parties’ arguments. For the following reasons, NBCU’s motion is
granted in full.
BACKGROUND
The subject matter of this suit is discussed more fully in the Court’s July 9, 2012,
decision in this action, Dish Network, L.L.C. v. Am. Broad. Companies, Inc., 12 Civ.
4155(LTS), 2012 WL 2719161 (S.D.N.Y. July 9, 2012) (the “July 9 Order”). Familiarity with
that decision is presumed.

DISH NBC TR AN SFER .W PD

VER SIO N 3/15/13

1

On May 24, 2012, Dish filed this action against American Broadcasting
Companies, Inc. (“ABC”), CBS Corp. (“CBS”), NBCU,1 and several Fox entities (collectively
“Fox” and, together with CBS/NBCU, “Defendants” or the “Networks”) seeking a declaratory
judgment that its “Auto Hop” technology does not infringe the Networks’ copyrights or breach
its license agreements with those entities. Hours later, the Defendants filed suits in the United
States District Court for the Central District of California, alleging that Dish’s PrimeTime
Anytime (“PTAT”) and “Auto Hop” television programming recording and playback services
infringe the Networks’ programming copyrights; Fox, additionally, alleged that the services
violated its licensing agreement with Dish.
Dish moved to enjoin the prosecution of the California actions. Fox then moved
to dismiss Dish’s declaratory judgment action as an improper anticipatory suit, and CBS/NBCU
moved to dismiss, transfer, or stay Dish’s action. In its July 9 Order, the Court found that Dish’s
declaratory judgment action was an improper anticipatory filing and dismissed it with respect to
all claims against Fox. The Court also dismissed Dish’s copyright claims against CBS/NBCU,
holding that CBS/NBCU, as the “natural plaintiff,” was entitled to pursue its affirmative claims
of infringement in the California action. However, the Court declined to dismiss the claims
against CBS/NBCU premised on the breach of the licensing agreement because those were not
the subject of coercive litigation in California. 2012 WL 2719161, at *6.2
On July 30, 2012, Dish answered NBCU's complaint in the California Action, and

1

CBS Corporation and NBCUniversal Media are collectively referred to
throughout as “CBS/NBCU.”

2

On September 4, 2012, Judge Gee of the Central District of California
granted Dish’s motion to dismiss and transfer the CBS case to the Southern
District of New York.

DISH NBC TR AN SFER .W PD

VER SIO N 3/15/13

2

pled as an affirmative defense that “DISH and its subscribers were authorized and/or licensed by
the Plaintiffs, to engage in the allegedly infringing conduct.” (Declaration of Jane G. Stevens
(“Stevens Decl.”), Ex. A, at 9.) Thereafter, NBCU amended its complaint in the California
Action to assert affirmative claims against Dish for breach of its Retransmission Agreement
with Dish.
On August 14, 2012, Dish amended its complaint in this action to provide
additional details about the contracts that it claims have not been breached by PTAT and
AutoHop. On August 28, 2012, simultaneously with the filing of the instant motion to transfer,
NBCU answered Dish’s amended complaint and asserted counterclaims for breach of contract
that are, in substance, identical to the claims that it asserted in its amended complaint in the
California Action.
Thereafter, Dish moved to dismiss the breach of contract claims that NBCU had
included in its amended complaint in the California action, arguing that those claims were
“properly only compulsory counterclaims in the New York action,” and that the July 9 Order
mandated that the contract claims proceed in the Southern District of New York. (Pl.’s Memo.
at 5-8, NBCU v. Dish Network Corp., et. al., No. 12 Civ. 4536(C.D. Cal.), docket entry no. 411.) On November 8, 2012, Judge Gee of the Central District of California denied Dish’s motion
to dismiss NBCU’s complaint in that action, holding that interests of judicial economy and
convenience weighed heavily in favor of allowing the contract claims and copyright claims to
proceed in a single forum. See Order of Nov. 8, 2012 at 5, NBCU v. Dish Network Corp., et. al.,
No. 12 Civ. 4536(C.D. Cal.).
DISCUSSION
Section 1404(a) of Title 28 permits a district court to transfer any civil action to

DISH NBC TR AN SFER .W PD

VER SIO N 3/15/13

3

another district where it might have been brought, where such transfer is “[f]or the convenience
of the parties and witnesses, [or] in the interest of justice.” 28 U.S.C. § 1404(a) (West 2010);
Whitehaus Collection v. Barclay Prods., Ltd., No. 11 Civ. 217(LBS), 2011 WL 4036097, at *1
(S.D.N.Y. Aug. 29, 2011).
There is no dispute that NBCU’s claims against Dish for breach of contract could
have been brought in the Central District of California. Having satisfied that threshold inquiry,
the Court must evaluate the following factors in determining whether transfer is appropriate:
(1) the convenience of the witnesses; (2) the convenience of the parties; (3) the location
of relevant documents and the relative ease of access to sources of proof; (4) the locus of
operative facts; (5) the availability of process to compel the attendance of unwilling
witnesses; (6) the relative means of the parties; (7) the forum's familiarity with governing
law; (8) the weight accorded to plaintiff’s choice of forum; and (9) trial efficiency and
the interests of justice.
Morris v. Ernst & Young, LLP, No. 12 Civ. 838(KMW), 2012 WL 3964744, at *3 (S.D.N.Y.
Sept. 11, 2012) (quoting In re Collins & Aikman Corp. Sec. Litig., 438 F. Supp. 2d 392, 394
(S.D.N.Y. 2006)). The party requesting transfer “carries the burden of making out a strong case
for transfer.” N.Y. Marine & Gen. Ins. Co. v. Lafarge N. Am., Inc., 599 F.3d 102, 114 (2d Cir.
2010) (quoting Filmline (Cross–Country) Prods., Inc. v. United Artists Corp., 865 F.2d 513, 521
(2d Cir. 1989)) (internal quotation marks omitted). District courts “have broad discretion in
making determinations of convenience under Section 1404(a)” and “notions of convenience and
fairness [must be] considered on a case-by-case basis.” D.H. Blair & Co. v. Gottdiener, 462
F.3d 95, 106 (2d Cir. 2006).
Given that NBCU’s breach of contract claims will proceed in the California
Action, judicial economy and the interests of justice weigh overwhelmingly in favor of transfer.
Numerous courts have recognized that transfer is appropriate when two cases involving the same

DISH NBC TR AN SFER .W PD

VER SIO N 3/15/13

4

issues are simultaneously pending in different district courts. See, e.g., Eres N.V. v. Citgo
Asphalt Ref. Co., 605 F. Supp. 2d 473, 483 (S.D.N.Y. 2009); Continental Grain Co. v. Barge
FBL-585, 364 U.S. 19, 26 (1960) (“To permit a situation in which two cases involving precisely
the same issues are simultaneously pending in different District Courts leads to the wastefulness
of time, energy and money that [Section] 1404(a) was designed to prevent.”). “[T]he benefits
for consolidating related cases in a common forum are often substantial. Such consolidation
may advance the strong policy interests of achieving efficient pretrial discovery, avoiding
duplicative litigation, and avoiding inconsistent results.” Am. S.S. Owners Mut. Prot. &
Indemn. Association v. American Boat Co., No. 11 Civ. 6804, 2012 WL 1382278, at *3
(S.D.N.Y. Apr. 20, 2012).
Dish offers the following in support of its claim that the balance of convenience
factors favor allowing the contract claim to proceed in New York: (1) of the four witnesses
NBCU has identified, two are in New York and only one is in Los Angeles; (2) NBCU
headquarters – and thus many of its documents and witnesses – are located in New York; and (3)
the Retransmission Agreement is governed by New York law. None of these factors, separately
or combined, trumps the interest in ensuring that the dispute over the Retransmission Agreement
is resolved in a single forum. The handful of witnesses that NBCU identifies are NBCU
employees, not non-party witnesses; NBCU, not Dish or the witnesses, would bear the costs of
producing them in California. See Indian Harbor Ins. Co. v. Factory Mut. Ins. Co., 419 F. Supp.
2d 395, 402 (S.D.N.Y. 2005) (“The convenience of non-party witnesses is accorded more
weight than that of party witnesses.”). Moreover, because the contract interpretation dispute
between NBCU and DISH will be heard in the California Action in any event, any potential
inconvenience to some witnesses “is significantly outweighed by the convenience of providing
DISH NBC TR AN SFER .W PD

VER SIO N 3/15/13

5

testimony in a single consolidated action.” Goggins v. Alliance Capital Mgmt., L.P., 279 F.
Supp. 2d 228, 233 (S.D.N.Y. 2003). Moreover, while it is true that the Retransmission
Agreement is governed by New York law, courts “‘routinely [hold] that the ‘governing law’
factor is to be accorded little weight on a motion to transfer venue . . . because federal courts are
deemed capable of applying the substantive law of other states.’” Aguiar v. Natbony, No. 10
Civ. 6531(PGG), 2011 WL 1873590, at *10 (S.D.N.Y. May 16, 2011) (quoting Ivy Soc'y Sports
Group, LLC v. Baloncesto Superior Nacional, No. 08 Civ. 8106(PGG), 2009 WL 2252116, at *8
(S.D.N.Y. July 28, 2009)).
The Court has considered the remainder of Dish’s objections to transfer and finds
them meritless.
CONCLUSION
For the foregoing reasons, NBCU’s motion to transfer is granted. The Clerk of
Court is requested to effectuate the transfer to the United States District Court for the Central
District of California of only that portion of this action in which Plaintiff Dish asserts a claim
against Defendant NBCU. NBCU's counterclaims in this action are dismissed, without
prejudice, in favor of the affirmative breach of contract claims that NBCU has interposed in the
California Action. This Memorandum Opinion and Order terminates docket entry no. 114.
SO ORDERED.
Dated: New York, New York
March 15, 2013
/S
LAURA TAYLOR SWAIN
United States District Judge

DISH NBC TR AN SFER .W PD

VER SIO N 3/15/13

6