Fioranelli v. CBS Broadcasting, Inc. et al
Filing
136
OPINION & ORDER: For the reasons stated herein, Plaintiff's motion to file a third amended complaint, (Doc. 120), is DENIED. The parties are directed to meet and confer and, on or before April 8, 2019, the parties shall submit a joint letter outlining a proposed briefing schedule for their anticipated summary judgment motions. (Signed by Judge Vernon S. Broderick on 3/6/2019) (ks)
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
---------------------------------------------------------X
:
ANTHONY FIORANELLI,
:
Plaintiff,
:
:
:
-v:
:
CBS BROADCASTING, INC.,
BBC WORLDWIDE AMERICAS, INC.,
:
T3 MEDIA, INC., TESTIMONY FILMS,
:
:
PARAMOUNT PICTURES
CORPORATION, MORNINGSTAR
:
:
ENTERTAINMENT, INC.,
:
CREATIVE DIFFERENCES, LLC, JVCT
PRODUCTIONS, INC., IPSE DIXIT, INC., :
and A&E TELEVISION NETWORKS, LLC, :
:
Defendants. :
:
---------------------------------------------------------X
3/6/2019
15-CV-952 (VSB)
OPINION & ORDER
Appearances:
Hillel Ira Parness
Parness Law Firm, PLLC
New York, NY
Counsel for Plaintiff
Robert Penchina (New York, NY)
Elizabeth Seidlin-Bernstein (Philadelphia, PA)
Thomas Byrne Sullivan (New York, NY)
Ballard Spahr LLP
Counsel for Defendants
VERNON S. BRODERICK, United States District Judge:
Before me is Plaintiff Anthony Fioranelli’s motion for leave to amend his complaint for
the third time, which Plaintiff filed more than three years after commencing this litigation. (Doc.
120.) Because Plaintiff failed to act with diligence in seeking leave to amend and has not
demonstrated good cause, his motion to amend is DENIED.
1
Factual Background and Procedural History 1
I assume the parties’ familiarity with this case and refer the parties to my prior
Memorandum & Order for a recitation of a more complete factual background. (See Doc. 71.)
Photojournalist Anthony Fioranelli commenced this action on February 9, 2015 by filing
his initial complaint. (Doc. 1.) He alleges that Defendant CBS Broadcasting, Inc. (“CBS”)
entered into unauthorized sublicenses with BBC Worldwide Americas, Inc. (“BBC”), T3 Media,
Inc. (“T3 Media”), Testimony Films, Paramount Pictures Corporation, Morningstar
Entertainment, Inc., Creative Differences, LLC, JVCT Productions, Inc., Ipse Dixit, Inc., and
A&E Televisions Networks, LLC (collectively, “Defendants”), 2 in violation of a 2002 agreement
between Plaintiff and CBS, which granted CBS a nonexclusive license to use unique audiovisual
footage recorded by Plaintiff at Ground Zero on September 11, 2001 and the days that followed
(the “9/11 Material”). (Doc. 71, at 3–4.) Plaintiff registered two copyrights for the 9/11 Material
in September 2014 (the “2014 copyright registrations”). (Id. at 3, 17.) Plaintiff’s original
complaint alleged claims for, inter alia, copyright infringement and inducement to infringe
federally registered copyrights, as well as federal and state law unfair competition claims, state
law claims for false advertising and interference with contractual relations, and a breach of
contract claim against Defendant CBS. (Doc. 1, at 10–23.)
On July 31, 2015, certain Defendants moved to dismiss the complaint for lack of
jurisdiction, (Docs. 49–50), and all Defendants moved to dismiss the complaint for failure to
1
I limit my description of the factual and procedural history to only those matters that are relevant to the motion
currently under consideration.
2
Plaintiff’s original complaint named additional defendants, including Brook Lapping Productions Ltd., RTW
Productions, LLC, Adams County Productions LLC, Telemaco SRL, Firecracker Films, LLC, John and Jane Does
1-10, John Doe Corporations 1-10, and John Doe Entities 1-10. (Doc. 1.) These defendants, however, are not
named in Plaintiff’s second amended complaint, filed on February 8, 2017. (Doc. 72.) The original complaint also
named Monkey Kingdom Ltd. (“MK”) as a defendant; Plaintiff voluntarily dismissed his claims against MK on
October 1, 2015. (Doc. 57.)
2
state a claim, (Docs. 51–52). In lieu of responding to those motions, Plaintiff filed an amended
complaint on August 28, 2015. (Doc. 53.) Defendants moved to dismiss the amended complaint
in its entirety on October 2, 2015, (Docs. 58–59), Plaintiff filed his opposition on November 3,
2015, (Doc. 61), and Defendants filed their reply on November 20, 2015, (Doc. 63). On January
19, 2017, I granted in part and denied in part Defendants’ motion to dismiss. (Doc. 71.)
Although I dismissed several of Plaintiff’s claims, I determined that Plaintiff could pursue claims
for copyright infringement against all Defendants; inducement to infringe copyright against
Defendants CBS, BBC, and T3 Media; and breach of contract against Defendant CBS. (Id. at
18.) I further held that Plaintiff was not entitled to seek statutory damages or attorney’s fees
under 17 U.S.C. §§ 504–505, in relation to his claims of copyright infringement. (Id.) This
determination was based on the language of § 412 of the Copyright Act, which proscribes the
award of statutory damages or attorney’s fees for “any infringement of copyright commenced
after first publication of the work and before the effective date of its registration.” 17 U.S.C.
§ 412. Plaintiff had alleged in his complaint that Defendants’ infringement of the 9/11 Material
commenced in about 2005 or 2006, but Plaintiff did not register the copyrights in question until
September 9, 2014. (Doc. 71, at 17.)
On April 13, 2017, I entered a Case Management Plan and Scheduling Order, barring the
addition of parties or causes of action after that date without obtaining my permission. (Doc.
78.) The Case Management Plan also set January 18, 2018 as the close of fact discovery. (Id.)
At the request of the parties, on November 27, 2017, I extended the close of fact discovery to
April 20, 2018. (Doc. 96.) On April 17, 2018, Attorney Hillel I. Parness filed a notice of
appearance on behalf of Plaintiff. (Doc. 99.) 3 On that same day, Plaintiff requested—and I
3
Plaintiff’s former counsel, Attorney Maxim H. Waldbaum, was let go by his law firm, Eaton & Van Winkle LLP,
which later disbanded, on December 19, 2017. (7/9 Tr. 4:3–4.) (“7/9 Tr.” refers to the transcript of the conference
3
granted—a thirty-day hold on all discovery deadlines, (Docs. 100, 102); I extended that hold by
an additional thirty days on May 23, 2018, (Doc. 104). A subsequent request by Plaintiff to
further revise the Case Management Plan was denied. (Doc. 135.) Both fact and expert
discovery have been closed since June 22, 2018.
On June 14, 2018, Plaintiff submitted a letter notifying me that an entity by the name of
Multi Media Network News LLC (“MMNN”), Plaintiff’s single-member limited liability
company, had filed a registration with the U.S. Copyright Office on July 30, 2004 (the “2004
copyright registration”), for the website, www.multimedianetworknews.com. (Doc. 105.) 4
Plaintiff’s letter explained that the website contained certain video clips and still images
excerpted from the 9/11 Material protected by the 2014 copyright registrations. (Id.) Plaintiff
requested a conference to discuss “add[ing the 2004 copyright registration] to the complaint, and
reinstat[ing] Mr. Fioranelli’s claims for the enhanced damages to which this registration
potentially entitles him.” (Id.) On July 9, 2018, Magistrate Judge Stewart D. Aaron—to whom
this matter has been referred for general pretrial proceedings, (Doc. 107)—held a status
conference addressing Plaintiff’s request for leave to amend and other discovery issues. (See
generally 7/9 Tr.) At that conference, Magistrate Judge Aaron ordered the parties to formally
brief Plaintiff’s request for leave to further amend the complaint. (Id. at 34:12–18.) Plaintiff
filed his motion, along with supporting documents, on July 23, 2018. (Docs. 120–22.)
held by Magistrate Judge Stewart D. Aaron on July 9, 2018, (Doc. 118).) Attorney Robert D. Katz, who also
entered an appearance in this action, left Eaton & Van Winkle LLP on February 28, 2018. (Id. at 12:17–23.) It
appears that Attorneys Waldbaum and Katz ceased work on this matter after Waldbaum left the firm, (id. at 13:13–
17), which prompted Plaintiff to obtain new representation.
4
In fact, Plaintiff filed a copyright registration for a CD-ROM, which contained a full download of the contents of
the MMNN website. (See Pl.’s Br. 5; 7/9 Tr. 21:20–22:5.) (“Pl.’s Br.” refers to the Memorandum of Law in
Support of Motion to Amend Complaint by Addition of Earlier Copyright Registration, filed on July 23, 2018, (Doc.
121).)
4
Defendants filed their opposition to the motion on August 6, 2018, (Doc. 126), and Plaintiff filed
his reply on August 13, 2018, (Doc. 132).
Legal Standard
It is “within the sound discretion of the district court to grant or deny leave to amend.”
McCarthy v. Dun & Bradstreet Corp., 482 F.3d 184, 200 (2d Cir.2007). While Rule 15(a) of the
Federal Rules of Civil Procedure states that the Court “should freely give leave when justice so
requires,” “[w]here a scheduling order has been entered governing, among other things, the
amendment of pleadings, the lenient standard under Rule 15(a) . . . must be balanced against the
requirement under Rule 16(b) that a court’s scheduling order ‘shall not be modified except upon
a showing of good cause.’” Martell Strategic Funding LLC v. Am. Hosp. Acad., No. 12-CV-627
(VSB), 2017 WL 2937649, at *2 (S.D.N.Y. July 10, 2017) (quoting Fed. R. Civ. P. 16(b)(4)); see
also Holmes v. Grubman, 568 F.3d 329, 334–35 (2d Cir. 2009); Parker v. Columbia Pictures
Indus., 204 F.3d 326, 340 (2d Cir. 2000) (holding that “a district court does not abuse its
discretion in denying leave to amend the pleadings after the deadline set in the scheduling order
where the moving party has failed to establish good cause”). “[A] finding of ‘good cause’
depends on the diligence of the moving party.” Parker, 204 F.3d at 340; see also Holmes, 568
F.3d at 335.
“[W]here the substance of the proposed amendment was known to the movant prior to the
deadline for amending pleadings, but the movant nevertheless failed to act, courts have denied
leave to amend under Rule 16.” 380544 Can., Inc. v. Aspen Tech., Inc., No. 07 Civ. 1204(JFK),
2011 WL 4089876, at *3 (S.D.N.Y. Sept. 14, 2011) (collecting cases); see also iMedicor, Inc. v.
Access Pharm., Inc., 290 F.R.D. 50, 52 (S.D.N.Y. 2013) (“[T]he good cause standard is not
satisfied when the proposed amendment rests on information that the party knew, or should have
5
known, in advance of the deadline.” (quoting Enzymotec Ltd. v. NBTY, Inc., 754 F. Supp. 2d 527,
536 (E.D.N.Y. 2010))).
A court “also may consider other relevant factors including, in particular, whether
allowing the amendment of the pleading at this stage of the litigation will prejudice” the nonmoving party. Kassner v. 2nd Ave. Delicatessen Inc., 496 F.3d 229, 244 (2d Cir. 2007). An
amendment is prejudicial to the non-moving party if it “would ‘require the opponent to expend
significant additional resources to conduct discovery and prepare for trial’ or ‘significantly delay
the resolution of the dispute.’” Ruotolo v. City of New York, 514 F.3d 184, 192 (2d Cir. 2008)
(quoting Block v. First Blood Assocs., 988 F.2d 344, 350 (2d Cir. 1993)).
Discussion
In his opening brief, Plaintiff argues that amendment is appropriate under Rule 15(a) of
the Federal Rules of Civil Procedure. (Pl.’s Br. 10.) Defendants respond that since a scheduling
order was in place, the correct standard is contained in Rule 16. (Defs.’ Opp. 4.) 5 Defendants
are correct: the applicable standard for deciding Plaintiff’s motion to amend is the “good cause”
standard set forth in Rule 16(b), which turns on whether or not Plaintiff acted with diligence in
seeking leave to amend.
Plaintiff concedes that he was aware of the 2004 copyright registration long before filing
his original complaint in this action. (See Pl.’s Br. 15 (“To be sure, the 2004 copyright
registration could have been included from the start of this case . . . .”).) Plaintiff filed his
complaint on February 9, 2015, (Doc. 1), subsequently amended the complaint on two occasions,
(Docs. 53, 72), and yet, did not bring the 2004 copyright registration to my attention until June
5
“Defs.’ Opp.” refers to Memorandum of Law in Opposition to Plaintiff’s Motion to Amend Complaint, filed on
August 6, 2018. (Doc. 126.)
6
14, 2018, (see Doc. 105)—nearly three-and-a-half years later, on the eve of the discovery cutoff
date, and after the deadline for amendments had long since passed.
Where the deadline for asserting additional claims or defenses set forth in the scheduling
order has passed, courts routinely deny leave to amend the pleadings if the moving party delayed
in seeking leave to amend for a period of five months or more. See, e.g., Martell Strategic
Funding LLC, 2017 WL 2937649, at *4 (denying leave to add an affirmative defense when
defendants were aware of the facts underlying the defense for more than two-and-a-half years
before seeking leave to amend); Grochowski v. Phoenix Constr., 318 F.3d 80, 86 (2d Cir. 2003)
(affirming denial of motion to amend where party delayed “more than one year” and discovery
was complete); Tardif v. City of New York, No. 13-CV-4056 (KMW) (FM), 2016 WL 2343861,
at *5 (S.D.N.Y. May 3, 2016) (finding “lengthy delay” of five months fell “far short of the
diligence necessary to show good cause”); Jackson v. Roslyn Bd. of Educ., 596 F. Supp. 2d 581,
586 (E.D.N.Y. 2009) (finding plaintiff’s delay of nearly five months evinced “a lack of
diligence”); see also Rambarran v. Mount Sinai Hosp., No. 06 Civ. 5109(DF), 2008 WL 850478,
at *3 (S.D.N.Y. Mar. 28, 2008) (denying motion to amend where plaintiff sought to amend
complaint three-and-a-half months after deadline). Plaintiff’s three-year delay here far exceeds
the five-month mark.
Plaintiff insists, however, that the lengthy delay in seeking to add the 2004 copyright
registration to his complaint was not due to lack of diligence on his part. Rather, Plaintiff
explains that he told his prior counsel, Attorney Maxim Waldbaum, about the 2004 copyright
registration during their initial meeting in May 2014. (Pl.’s Decl. ¶ 16.) 6 According to Plaintiff,
6
“Pl.’s Decl.” refers to the Certification of Anthony Fioranelli in support of Plaintiff’s Motion to Amend Complaint
by Addition of Earlier Copyright Registration, filed on July 23, 2018, (Doc. 122).
7
at that meeting, one of Waldbaum’s first questions was whether Plaintiff had any registered
copyrights; he told Waldbaum about the registration of the MMNN website and Waldbaum
purportedly responded, “it’s not the same.” (Id. ¶ 18.) When Plaintiff pressed the issue,
Waldbaum replied that the registration was “just different.” (Id.) Plaintiff and Waldbaum had
no further conversations regarding the 2004 copyright registration. (Id.)
At the July 9, 2018 hearing before Magistrate Judge Aaron, Attorney Waldbaum denied
that Plaintiff had ever mentioned the 2004 copyright registration to him, stated that Plaintiff told
him that Plaintiff “had no registrations,” and noted that he conducted a “thorough investigation”
with Plaintiff before filing the lawsuit. (7/9 Tr. 8:19–9:8; 10:17–18.) Waldbaum also
emphasized that there was no reference to the 2004 copyright registration in the substantial set of
documents Plaintiff produced to Defendants over the course of this litigation. (Id. at 9:8–16.)
Even accepting that Plaintiff advised his prior counsel of the 2004 copyright registration
prior to filing this lawsuit, Plaintiff cannot demonstrate good cause for belatedly seeking to add
the 2004 copyright registration to his complaint. It is well established that “the failure of an
attorney to recognize a potential cause of action is not a sufficient justification for granting leave
to amend a complaint.” Yurman Design Inc. v. Chaindom Enters., Inc., No. 99 Civ. 9307(JFK),
2001 WL 725291, at *2 (S.D.N.Y. June 27, 2001); see also Davidowitz v. Patridge, No. 08 Civ.
6962 (NRB), 2010 WL 1779279, at *4 (S.D.N.Y. Apr. 23, 2010) (“[L]itigants are generally
bound by the professional conduct of the attorneys they choose to represent them, although the
conduct of counsel may give rise to a claim for malpractice by the client.” (internal quotation
marks omitted)); Lastra v. Weil, Gotshal & Manges LLP, No. 03 Civ. 8756 (RJH)(RLE), 2005
WL 551996, at *4 (S.D.N.Y. Mar. 8, 2005) (“Absent extraordinary circumstances, a client
assumes the risk of his attorney’s actions and is bound even by the consequences of his
8
attorney’s negligence.”); Church of Scientology Int’l v. Time Warner, Inc., 92 CIV. 3024(PKL),
1998 WL 575194 at *2 (S.D.N.Y. Sept. 9, 1998) (denying plaintiff’s request to amend the
complaint after a new attorney identified a new legal theory), aff’d sub nom. Church of
Scientology Int’l v. Behar, 238 F.3d. 168 (2d Cir. 2001).
Dunham v. City of New York, 295 F. Supp. 3d 319 (S.D.N.Y. 2018), on which Plaintiff
relies, is easily distinguishable. Although the Dunham court did permit plaintiff, who was
incarcerated and therefore largely unable to oversee the work of his attorney, to amend his
complaint after a three-year delay, it did so on the basis of “‘extraordinary circumstances’—the
well-established and detailed allegations of [plaintiff’s counsel’s] misconduct.” Id. at 328. The
amendment in Dunham was delayed first because plaintiff’s counsel failed for several months to
file an amended complaint expressly authorized by the district court; next, because counsel was
subsequently suspended from the practice of law entirely and failed to advise plaintiff of that
suspension; and finally, because after the court held the matter in abeyance until counsel was
reinstated, counsel again failed to respond to communications from both plaintiff and the court.
Id. at 324–25. Such “extraordinary circumstances” are entirely absent here, where Plaintiff
alleges only that he notified Attorney Waldbaum of the 2004 copyright registration in May 2014,
that Waldbaum responded that the registration should not be included in Plaintiff’s complaint,
and that they did not discuss the issue again. (Pl.’s Decl. ¶¶ 16–18.) On their face, these claims
do not appear to assert misconduct by Waldbaum. In any event, even assuming that Plaintiff’s
assertions could be characterized as allegations of some form of misconduct, they are precisely
the “vague allegations by a plaintiff regarding his attorney’s misconduct [that] are ‘insufficient to
establish good cause for’ belated amendments.” Dunham, 295 F. Supp. 3d at 328 (quoting Guity
9
v. Uniondale Union Free Sch. Dist., No. CV 12-1482(SJF)(AKT), 2014 WL 795576, at *5
(E.D.N.Y. Feb. 27, 2014)).
Moreover, there appear to be legitimate strategic reasons why Attorney Waldbaum may
have elected not to bring claims based on the 2004 copyright registration. As Defendants point
out in their opposition, the 2004 copyright registration is owned by MMNN, not by Plaintiff
himself. (Defs.’ Opp. 11–12.) Furthermore, the 2004 copyright registration applies to a website
containing video clips and still images excerpted from the 9/11 Material. (Id. at 9–11.)
Therefore, the website may well be a compilation that is derivative of the 9/11 Material—see 17
U.S.C. § 101 (defining “compilation” as “a work formed by the collection and assembling of
preexisting materials,” and a “derivative work” as “a work based upon one or more preexisting
works”)—and MMNN does not hold a copyright in the 9/11 Material. Cf. Morris v. Bus.
Concepts, Inc., 283 F.3d 502, 506 (2d Cir. 2002) (“[U]nless the copyright owner of a collective
work also owns all the rights in a constituent part, a collective work registration will not extend
to [that] constituent part.”). 7 As Magistrate Judge Aaron commented during the parties’ July 9,
2018 conference, the decision not to include the 2004 copyright registration in this lawsuit was
arguably a “tactical” one. (7/9 Tr. 30:20–21.)
Finally, even if Plaintiff had acted with diligence—which he most certainly did not—I
find that granting the proposed amendment at this late stage of the litigation would cause
significant delay and would prejudice Defendants. See Ruotolo, 514 F.3d at 192 (noting that an
7
Defendants cite a number of deficiencies that would render Plaintiff’s proposed amendment futile, including the
derivative nature of the work protected by the 2004 copyright registration, the fact that the 2004 copyright
registration is owned by an entity other than Plaintiff, and the fact that a claim by MMNN would arguably be timebarred. (Defs.’ Opp. 8–16; see also 17 U.S.C. § 507(b) (providing a three-year statute of limitations for copyright
claims).) Although I decline to base my denial of Plaintiff’s request to amend on the ground that such an
amendment would be futile, I note that even if the amendment were permitted, Plaintiff would face an uphill battle
at the motion-to-dismiss stage.
10
amendment is prejudicial where it “would ‘require the opponent to expend significant additional
resources to conduct discovery and prepare for trial’ or ‘significantly delay the resolution of the
dispute’” (quoting Block, 988 F.2d at 350)). Permitting Plaintiff to add an additional copyright
registration to this lawsuit after discovery has closed would substantially prolong this litigation,
which has already been pending for over four years. Plaintiff argues that the proposed
amendment would not require Defendants to produce any additional discovery as the material
protected by the 2004 copyright registration is also covered by the 2014 copyright registrations
and, therefore, does not give rise to any new acts of alleged infringement. (Pl.’s Br. 14–15.)
“Discovery, however, is not a one-way street designed to allow plaintiffs to collect evidence in
support of their claims. It is also a mechanism for defendants to accumulate evidence to defend
themselves and to test the evidence of their opponents.” Davidowitz, 2010 WL 1779279, at *5.
Indeed, Plaintiff appears to recognize that his proposed amendment would almost certainly
prompt additional discovery requests by Defendants. (7/9 Tr. 29:9–11.)
Moreover, it is clear that Plaintiff’s proposed amendment would lead to additional motion
practice, as Defendants proffer in their opposition numerous reasons why the amendment fails to
state a claim on which relief may be granted. (Defs.’ Opp. 8–16.) I find that the cost and delay
that would result from authorizing Plaintiff’s amendment justify denial of Plaintiff’s motion. See
Mid Atlantic Framing, LLC v. Varish Constr., Inc., No. 3:13-CV-01376 (MAD/DEP), 2017 WL
4011260, at *5 (N.D.N.Y. Sept. 11, 2017) (affirming denial of request to amend where “case
[wa]s nearly four-years old and amending the complaint at th[at] stage w[ould] undoubtedly lead
to another motion to dismiss and additional discovery”).
11
Conclusion
For the reasons stated herein, Plaintiff’s motion to file a third amended complaint, (Doc.
120), is DENIED. The parties are directed to meet and confer and, on or before April 8, 2019,
the parties shall submit a joint letter outlining a proposed briefing schedule for their anticipated
summary judgment motions.
SO ORDERED.
Dated: March 6, 2019
New York, New York
______________________
Vernon S. Broderick
United States District Judge
12
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?