TEAM ANGRY FILMWORKS, INC. v. LOUISE A. GEER et al.
MEMORANDUM OPINION re 75 MOTION TO DISMISS FOR FAILURE TO STATE A CLAIM MOTION to Dismiss for Lack of Jurisdiction MOTION for Joinder as to 73 Amended Complaint /Defendant's Motion to Dismiss Plaintiff's Third Amended Complaint Pursuant to FRCP Rules 12(b)(1) and 12(b)(6), and for Joinder of Necessary or Dismissal for Lack of Indispensable Parties filed by LOUISE A. GEER. Signed by Chief Judge Joy Flowers Conti on 3/23/17. (jp)
IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF PENNSYLVANIA
TEAM ANGRY FILMWORKS, INC.,
a California company,
LOUISE A. GEER, as Trustee of the
Dille Family Trust,
Civ. No. 15-1381
CONTI, Chief District Judge
California film-production company Team Angry Filmworks, Inc. (“plaintiff”)
calls upon the court to declare that Philip Francis Nowlan’s 1928 science-fiction novella
Armageddon–2419 A.D. (“Armageddon”) and character “Buck Rogers” entered the
public domain, pursuant to the Declaratory Judgment Act (the “DJA”), 28 U.S.C. §
2201(a). As trustee of the Dille Family Trust (the “Trust”), defendant Louise A. Geer
(“defendant”) filed the instant motion:
• to dismiss the third amended complaint under Federal Rule of Civil Procedure
12(b)(1) for failure to present a justiciable controversy under the DJA and Article
III of the Constitution; or
• in the alternative, to join necessary parties or to dismiss for lack of indispensable
parties under Federal Rules of Civil Procedure 12(b)(7) and 19. (ECF No. 75.)
Having been fully briefed, defendant’s motion is ripe for disposition. For the
reasons explained in this opinion, the court will: (1) deny defendant’s Rule 12(b)(1)
motion to dismiss for want of Article III standing; and (2) deny defendants motion for
joinder of necessary parties or dismissal for lack of indispensable parties under Rules
12(b)(7) and 19, without prejudice.
The factual background of this case was already laid out extensively in this court’s
prior opinions considering defendant’s motions to dismiss the the first amended
complaint and the second amended complaint. See Team Angry Filmworks, Inc. v. Geer,
Civ. Action No. 15-1381, 2016 WL 1086370 (W.D. Pa. Mar. 21, 2016) [hereinafter Team
Angry Filmworks I]; Team Angry Filmworks, Inc. v. Geer, No. CV 15-1381, 2016 WL
6039068 (W.D. Pa. Oct. 14, 2016) [hereinafter Team Angry Filmworks II]. The court
will, therefore, proceed with only a brief summary of the relevant facts.
This case was initially filed in the United States District Court for the Central
District of California. (ECF No. 1.) The California district court found venue proper in
the Western District of Pennsylvania under 28 U.S.C. § 1391(b)(1) and transferred the
action to this court under 28 U.S.C. §§ 1404(a) and 1406(a). (ECF No. 27 at 2.) On
January 7, 2016, this court granted defendant’s first Rule 12(b)(1) motion to dismiss
without prejudice. (ECF No. 53.) On January 29, 2016, plaintiff filed its first amended
complaint. (ECF No. 54.) Defendant responded by filing a motion to dismiss or in the
alternative for joinder of an indispensable party. (ECF No. 55.) The court granted
defendant’s motion to dismiss plaintiff’s first amended complaint on the grounds that the
complaint failed to allege a justiciable controversy under the Declaratory Judgment Act
(“DJA”) and Article III of the United States Constitution. Team Angry Filmworks I, 2016
WL 1086370. Plaintiff filed a second amended complaint, which the court dismissed on
the same grounds. Team Angry Filmworks II, 2016 WL 6039068.
In its opinions in both Team Angry Filmworks I and Team Angry Filmworks II,
this court explained in depth the test courts use to determine whether a justiciable
controversy exists under the DJA and Article III. In MedImmune, the Supreme Court
affirmed the totality-of-the-circumstances approach and held that a controversy is
justiciable under Article III and the DJA if it is “‘definite and concrete, touching the legal
relations of parties having adverse legal interests.’” MedImmune, Inc. v. Genentech, Inc.,
549 U.S. 118, 127 (2007) (quoting Aetna Life Ins. Co. of Hartford v. Haworth, 300 U.S.
227, 240–41 (1937)). The “‘question in each case’” after MedImmune is “‘whether the
facts alleged, under all the circumstances, show there is a substantial controversy,
between parties having adverse legal interests, of sufficient immediacy and reality to
warrant the issuance of a declaratory judgment.’” Id. (quoting Md. Cas. Co. v. Pac. Coal
& Oil Co., 312 U.S. 270, 273 (1941) (emphasis added)).
In Team Angry Filmworks II, this court determined that plaintiff’s second
amended complaint satisfied the “reality” prong of MedImmune, but that plaintiff still
failed on the “immediacy prong.” Team Angry Filmworks II, 2016 WL 6039068, at *10–
11. In particular, this court held that “because the second amended complaint alleges
neither when film production could begin nor when the infringing film could be released,
the court cannot conclude from the face of the complaint that plaintiff is ‘immediately
prepared’ to engage in copyright-infringing activity, as required under the DJA and
Article III.” Id. at 10. Because plaintiff did not satisfy the immediacy prong this court
granted defendant’s motion to dismiss without prejudice. Id. at 12.
On December 12, 2016, plaintiff filed its third amended complaint. (ECF No. 73.)
While plaintiff’s third amended complaint contains many of the same factual allegations
as the earlier complaints, it also included additional concrete assertions with respect to
the timing of pre-production and production for plaintiff’s proposed film. Plaintiff
attached to the third amended complaint “a Letter of Intent with Legendary Pictures
confirming its intent to make ‘Armageddon 2419’ when this legal situation is cleared up.”
(Id.) The letter outlined a clear timeline for developing a screenplay, casting the roles,
completing pre-visualization (three months) and commencing filming (within six
months). (ECF No. 73-2). This timeline was also stated in the body of the third amended
complaint. (ECF No. 73 ¶ 10.)
On January 9, 2017, defendant filed a motion to dismiss plaintiff’s third amended
complaint pursuant to Rules 12(b)(1) and 12(b)(7) and a motion for joinder of necessary
parties or dismissal for lack of indispensable parties under Rules 12(b)(7) and 19, along
with accompanying briefs and exhibits. (ECF Nos. 75, 76, 77.) On January 27, 2017,
plaintiff filed a response in opposition to defendant’s motion, a brief in opposition, and
objections to defendant’s exhibits. (ECF Nos. 79, 80, 81.) On March 10, 2017, this court
held a hearing to discuss defendant’s motion. 1 Having been fully briefed, defendants’
motion to dismiss and motion to join necessary parties is ripe for disposition.
A. Defendant’s Motion to Dismiss
Because this court already outlined the standards for a Rule 12(b)(1) motion and
for establishing a case of controversy under the Article III, the DJA, and MedImmune in
its previous decisions on this matter, Team Angry Filmworks I, 2016 WL 1086370, Team
Angry Filmworks II, 2016 WL 6039068, the court will not repeat those standards here.
Instead the court will proceed directly to the outstanding issue: immediacy.
A dispute “lacks immediacy” where there are no allegations in the complaint with
respect to “when, if ever,” the product will be “used in a manner that could potentially
infringe” the intellectual property rights of another. See Matthews Int’l Corp. v. Biosafe
Eng’g, L.L.C., 695 F.3d 1322, 1328 (Fed. Cir. 2012). In order “to establish a ‘case or
controversy’ in a declaratory relief action, ‘the plaintiff must have actually produced the
accused article or have engaged in preparations for production such that ‘but for a finding
that the product infringes or for extraordinary and unforeseen contingencies, the plaintiff
would and could begin production immediately.’ ” Sobini Films v. Tri-Star Pictures Inc.,
Civil Action No. 01-06615, 2001 WL 1824039, at *4 (C.D. Cal. Nov. 21, 2001) (quoting
In response to the issues raised during the hearing on March 10, 2017, plaintiff withdrew the trademark
claim contained within its third amended complaint without prejudice. (ECF No. 83.) The claims made in
plaintiff’s third amended complaint now exclusively involve issues of copyright law with respect to
Armageddon 2419 A.D.
Heerema Marine Contractors v Santa Fe Int’l Corp., 582 F.Supp. 445, 448–49 (C.D.Cal.
1984)) (emphasis original).
Unlike the second amended complaint, which this court dismissed for lack of
immediacy, the third amended complaint contains sufficiently specific allegations with
respect to the timing of plaintiff’s film production, assuming a declaratory judgment is
entered in plaintiff’s favor. Plaintiff attached to the third amended complaint a letter of
intent from the executive vice president of Legendary Pictures outlining a clear and
immediate timeline for the production of the allegedly infringing film. Plaintiff asserts,
through the letter provided by Legendary Pictures, that the screenplay, casting, and
previsualization can all be completed within three months and that the parties can begin
“making the film” within six months. (ECF No. 73-2.) These assertions represent a
marked change from plaintiff’s earlier briefings, which provided no specificity with
respect to the timing of production or filming. 2
Plaintiff’s previous complaint contained only conclusory allegations that “development of the [film] is
well underway” and that “[plaintiff] has taken significant, concrete steps toward producing and releasing
its film.” (ECF No. 63.) The court found that these conclusory statements were insufficient to show the
immediacy required by Article III. See Matthews Int’l Corp. v. Biosafe Eng’g, L.L.C., 695 F.3d 1322,
1329 (Fed. Cir. 2012) (“[P]otential future infringement . . . [is not] sufficiently immediate. . . .”). The only
time plaintiff spoke specifically about timing of their allegedly infringing activity was in their
Memorandum of Law in Opposition to the Motion to Dismiss. (ECF No. 68 at 2.) (“Plaintiff is
immediately prepared to physically shoot this film, but [for] the fact . . . that financing can never be
secured as a proximate cause of Defendant’s repeated threats.”) The court found it problematic that this
assertion was not made within the body of the second amended complaint.
Plaintiff’s third amended complaint adequately alleges facts establishing the
immediacy of this dispute, as required under Article III. The new assertions regarding the
production timeline for plaintiff’s film provide “specific and concrete evidence” about
when infringement will occur, Matthews Int’l Corp., 695 F.3d at 1329 – namely, within
three to six months of the completion of this litigation. This timeframe is sufficiently
immediate to satisfy the first prong of MedImmune, as plaintiff appears “ready to
‘immediately produce’ the potentially infringing item.” Sobini Films, 2001 WL 1824039,
at *8. The proffered timelines of three and six months indicates that but for this litigation,
plaintiff has “an immediate capability and intent to produce an allegedly infringing item.”
Swedlow, Inc. v. Rohm & Haas Co., 455 F.2d 884, 886 (9th Cir. 1972)
While the court recognizes that the letter of intent from Legendary Pictures is
nonbinding, and that there is a possibility that the infringing film may not be produced
even if plaintiff secures a favorable declaratory judgment, the immediacy standard does
not require an absolute guarantee that the infringing product will be produced. Heerema
Marine Contractors, et al. v. Santa Fe Int'l Corp., 255 U.S.P.Q. 41, at *42 (1984))
(finding that, inter alia, a letter of intent to enter into a contract to install an allegedly
infringing item “evidenc[ed] a definite intention to utilize the potentially infringing
[item]” in the immediate future.). Here, the immediacy prong merely requires a showing
by plaintiff that, but for the copyright dispute, “the plaintiff would and could begin
production immediately.” Sobini Films, 2001 WL 1824039, at *4 (emphasis original).
Plaintiff has provided sufficient evidence to meet this standard, particularly in light of the
practical difficulties that come with securing financing for a film whose subject matter is
involved in a copyright dispute. As plaintiff explained at length, production companies,
as a matter of course, do not finance movies when such disputes exist. (ECF No. 73 ¶¶
25–26.) Given the difficulties associated with proving immediacy when financing is
nearly impossible, the court finds that plaintiff’s timeline outlining several stages of preproduction and production, as laid out in the letter of intent from Legendary Pictures,
meets the requirements under the DJA for establishing immediacy.
Because plaintiff’s third amended complaint establishes the immediacy of this
dispute, and in that complaint plaintiff reiterates the factual allegations set forth in the
second amended complaint that establish the reality of this dispute, see Team Angry
Filmworks II, 2016 WL 6039068, the court concludes that this action involves a
justiciable controversy. The court will, therefore, deny defendant’s Rule 12(b)(1) motion
to dismiss for want of Article III standing.
B. Defendant’s Motion for Joinder of Necessary Parties or Dismissal for
Lack of Indispensable Parties
Defendant filed a motion for joinder of necessary parties or dismissal for lack of
indispensable parties under Rules 12(b)(7) and 19. Defendant is currently engaged in
litigation in federal court in the Eastern District of Pennsylvania with the Nowlan Family
Trust (“NFT”), Dille Family Trust v. Nowlan Family Trust, No. 2:15-cv-06231-WB
(E.D. Pa. filed May 5, 2016) and Armageddon, LLC (“AL”) Dille Fmaily Trust, T.T.A.B.
Opposition No. 91225273 (filed December 9, 2015). Those cases arise out of disputes
with respect to trademark rights of “Buck Rogers” and Armageddon 2419 A.D. Defendant
requests that the court join NFT and AL to this action, or, if joinder is not feasible, that
the court dismiss plaintiff’s second amended complaint with prejudice for lack of an
indispensable party. (ECF No. 75 ¶ 10–11.)
1. Rule 19 standard
Federal Rule of Civil Procedure 19governs the determination whether joinder of a
party is compulsory. Rule 19 is comprised of subdivisions (a) and (b). As the Third
Circuit Court of Appeals has explained, Rule 19 contemplates a two-step analysis:
A court must first determine whether a party should be joined if “feasible”
under Rule 19(a). If the party should be joined but joinder is not feasible
because it would destroy [subject-matter jurisdiction], the Court must then
determine whether the absent party is “indispensable” under Rule 19(b). If
the party is indispensable, the action therefore cannot go forward.
Janney Montgomery Scott v. Shepard Niles, 11 F.3d 399, 404 (3d Cir.1993). Thus, a
court must first determine whether an absent party is “necessary” for a just adjudication
of a case under Rule 19(a).
Rule 19(a)(1) provides in pertinent part that:
A person who is subject to service of process and whose joinder will not
deprive the court of jurisdiction over the subject matter of the action shall
be joined as a party in the action if (A) in the person's absence complete
relief cannot be accorded among those already parties or (B) the person
claims an interest relating to the subject of the action and is so situated that
the disposition of the action in the person's absence may (i) as a practical
matter impair or impede the person's ability to protect that interest or (ii)
leave any of the persons already parties subject to a substantial risk of
incurring double, multiple, or otherwise inconsistent obligations by reason
of the claimed interest ...
Under Rule 19(a)(1), a court must determine if complete relief can be accorded
among those who are already parties to this action. Angst v. Royal Maccabees Life
Insurance Co., 77 F.3d 701, 705 (3d Cir.1996). “Completeness is determined on the basis
of those persons who are already parties, and not as between a party and the absent
person whose joinder is sought.” Id. The court must determine whether the prevailing
party would receive “hollow relief” were the absent party not joined to the pending
Where complete relief can be accorded to the existing parties without joining the
absent party, the absent party may still be necessary pursuant to subsection (a)(1)(B) of
the rule. Under subsection (a)(1)(B)(i) the court must determine whether the absent
parties claim an interest relating to the subject of the pending action and whether
disposition of the pending action would “as a practical matter impair or impede” the
ability of the absent parties to protect this interest. To impair or impede in this manner,
the federal judgment must have a “direct and immediate” effect on the
[other] proceedings. “[I]t must be shown that some outcome of the federal
case that is reasonably likely can preclude the absent party with respect to
an issue material to the absent party's rights or duties under standard
principles governing the effect of prior judgments.”
Id. (quoting Janney Montgomery Scott, Inc. v. Shepard Niles, Inc., 11 F.3d 399, 407 (3d
If a party is not considered necessary under subsection (a)(1)(B)(i), they may still
be necessary under subsection (a)(1)(B)(ii) if their absence from the instance action
would leave either plaintiff or defendant “subject to a substantial risk of incurring double,
multiple, or otherwise inconsistent obligations by reason of the claimed interest.” Sindia
Expedition, Inc. v. Wrecked & Abandoned Vessel, Known as The Sindia, 895 F.2d 116,
122 (3d Cir. 1990). The Third Circuit Court of Appeals has held that subsection
is primarily aimed at protecting parties before the court. The subdivision
was enacted to protect parties from a “substantial” risk of multiple or
inconsistent obligations, not merely a possible risk. The subdivision also
helps to protect defendants from “needless” multiple litigation. A court
considering [Rule 19(a)(1)(B)(ii)] must balance the plaintiff's choice of
forum against the policies of judicial economy and fairness to other parties.
Id. (citations omitted). Subsection (a)(1)(B)(ii) protects litigants against multiple
obligations; it does not protect parties against multiple legal actions. Id.at 123; Boone v.
General Motors Acceptance Corp., 682 F.2d 552, 554 (5th Cir.1982); Field v.
Volkswagenwerk AG, 626 F.2d 293, 300–302 (3d Cir.1980).
If the court determines that the absent party or parties are necessary the court must
join them, so long as it is feasible to do so.
2. Background of Pending Litigation Between Defendant and NFT/AL
Defendant is currently involved in trademark disputes with the Nowlan Family
Trust (“NFT”) and Armageddon, LLC (“AL”), “an entity apparently controlled by NFT”.
(ECF No. 77 ¶ 2.) 3 Defendant states that “[o]n January 15, 2009 [NFT] filed an intent3
Plaintiff objects to the statements submitted by Louise A. Geer in her declaration in
support of defendant’s motion for joinder at ECF. No. 67. Plaintiff asserts that paragraphs
two and three of Ms. Geer’s declaration are “irrelevant and inadmissible for purposes of
the instant motion as to purported facts unrelated to this plaintiff and not in existence at
the time this case was filed.” (ECF No. 69 at 3, 4.) Here, and elsewhere, plaintiff claims
to-use application to register the trademark BUCK ROGERS.” (ECF No. 67-1 ¶ 53.) The
Patent and Trademark Office “examined the Application and published the Application
for opposition on June 14, 2011.” (Id.) Defendant “filed a Notice of Opposition with the
[Trademark Trial and Appeal Board] on or about July 12, 2011.” (Id.)
On September 25, 2015, the Trademark Trial and Appeal Board (“TTAB”)
rendered a decision dismissing defendant’s opposition. (ECF Nos. 77 ¶ 2, 77-1 ¶ 54.)
Defendant appealed this decision to the District Court for the Eastern District of
Pennsylvania. (ECF No. 77-1). On May 5, 2015, defendant filed its second amended
complaint in that case, which withstood a motion to dismiss. (ECF No. 77 ¶ 2.) That
litigation is well underway, with summary judgment and Daubert motions due to be filed
by May 17, 2017. (Id.)
Defendant is also engaged in litigation with AL, which sought to register the
trademark “Armageddon 2419 A.D.” (Id.) On December 9, 2015, defendant filed a notice
of opposition with respect to the registration of this mark. (Id.) On August 15, 2016 the
TTAB suspended proceedings in that matter pending a final decision in the appeal of the
TTAB’s decision with respect to NFT’s application.
that the actions between defendant and NFT and AL are not relevant because defendant
initiated the cases against NFT and AL “subsequent to the initiation of the instant
lawsuit.” (ECF No. 69 at 14.) Plaintiff provides no evidence to support this conclusion,
and as far as this court can tell, defendant first asserted its trademark claims against NFT
as early as July 2011. (ECF No. 67-1 ¶ 53.) At this time the court will entertain the
evidentiary evidence submitted by defendant in support of her motion for joinder.
To determine whether joinder is appropriate in this case, the court must first
determine whether NFT and AL are necessary parties. Under Rule 19(a)(1), a party is
necessary if complete relief cannot be accorded among those who are already parties to
the action. Angst v. Royal Maccabees Life Insurance Co., 77 F.3d 701, 705 (3d
Cir.1996). “Completeness is determined on the basis of those persons who are already
parties, and not as between a party and the absent person whose joinder is sought.” Id.
Here, it appears that complete relief can be accorded among the present parties.
Plaintiff claims that Armageddon and “Buck Rogers” have entered the public domain
pursuant to the Copyright Law of the United States, 17 U.S.C. §§ 301–305, and the First
Amendment to the United States Constitution. (ECF No. 73 ¶ 40.) Plaintiff requests “a
judicial determination and order declaring that” the copyright for Armageddon has
expired and that the story elements and characters, particularly the character of Buck
Rogers, have entered the public domain. (Id. at 22.) Were this court to decide in
plaintiff’s favor, the court could provide complete relief to plaintiff through a declaratory
judgment. Conversely, were this court to determine that Armageddon and “Buck Rogers”
have not entered the public domain, the court could provide complete relief to defendant
by finding in its favor on summary judgment or after trial. The absent parties are not
necessary under Rule 19(a)(1), as neither party, if they were to prevail, would receive
“hollow relief” in the absence of NFT and AL.
Under subsection (a)(1)(B)(i) the court must determine whether NFT and AL
claim interests relating to the subject of this action and whether disposition of this action
would “as a practical matter impair or impede” NFT or AL’s ability to protect this
interest. With the withdrawal of plaintiff’s Lanham Act claim from their third amended
complaint, (ECF No. 83) plaintiff’s complaint only contains claims regarding issues of
copyright law with respect to Armageddon 2419 A.D and the story elements and
characters originating therein. (ECF No. 73 at 22–23.) It does not appear that a finding in
this court about the copyright of Armageddon 2419 will affect NFT and AL’s pending
trademark litigation. Copyright and trademark are distinct areas of the law.
The fact that a copyrightable character of design has fallen into the public domain
should not preclude protection under the trademark law so long as it is shown to
have acquired independent trademark significance, identifying in some way the
source or sponsorship of the goods. Because the nature of the property right
conferred by copyright is significantly different from that of trademark, trademark
protection should be able to co-exist and possibly to overlap with copyright
protection without posing preemption difficulties.
Frederick Warne Co., Inc. v. Book Sales Inc., 481 F. Supp. 1191, 1196 (S.D.N.Y. 1979).
This court is not convinced that, even if it does determine that the material in question
entered the public domain, that such a determination will impede NFT and AL’s rights
under trademark law.
Additionally, courts within the Third Circuit have held that subsection (a)(1)(B)(i)
does not apply where the absent party can voluntarily assert that its interest would be
impaired or impeded without joinder, and the absent party has not asserted such an
interest. Radian Guar. Inc. v. Bolen, 18 F. Supp. 3d 635, 641–42 (E.D. Pa.
2014)(“Subdivision [(a)(1)(B)(i)] of Rule 19 clearly does not apply to this case because
[the absent party] may always protect its interest . . . by voluntarily appearing and
asserting its rights.” ) (quoting Sindia Expedition, Inc. v. Wrecked & Abandoned Vessel,
Known as The Sindia, 895 F.2d 116, 122 (3d Cir. 1990)). Courts have held, however, that
“[i]t is appropriate, in considering a motion under Rule 19, to ask the absent party herself
whether she believes that her interests would be jeopardized in the absence of joinder.
While that person's response is not dispositive of the issue, it may provide a helpful
counterbalance to the moving party's assertions.” Kessler v. Pollick, 851 F. Supp. 687,
691 (E.D. Pa. 1994) (citations omitted). Because NFT and AL did not assert an interest in
this action, and the court is not convinced that NFT and AL’s trademark rights will be
impaired or impeded if they are not joined herein, the court cannot find that the absent
parties are necessary under subsection (a)(1)(B)(i).
Finally, the court must determine whether NFT and AL are necessary parties
under subsection (a)(1)(B)(ii). A party is necessary under this subsection if its absence
from the action would leave either the plaintiff or the defendant “subject to a substantial
risk of incurring double, multiple, or otherwise inconsistent obligations by reason of the
claimed interest.” Defendant claims that this suit is like any other action where multiple
parties claim ownership to a piece of property, and that in such cases absent claimants
who have asserted rights to the property are typically found to be necessary in order “to
avoid duplicative litigation, unnecessary costs, and potentially inconsistent judgment.”
(ECF No. 76 at 14.)
The court is not persuaded by defendant’s argument that the instant action is
analogous to traditional property disputes where multiple claimants assert opposing
interests in a single property. Here, plaintiff asserts no right in Armageddon or “Buck
Rogers.” Plaintiff “assumes and does not deny that [defendant] is the sole owner of the
[Nowlan’s] rights in [Armageddon], but only to the extent that any such rights are valid
and existing.” (ECF No. 73 at ¶ 27.) Plaintiff does not claim a property right to
Armageddon; rather, plaintiff seeks a declaratory judgment from the court that
Armageddon and “Buck Rogers” have entered the public domain. Defendant cites no
decision, and the court is aware of no decision, where a party was simultaneously
engaged in litigation with respect to the expiration of a copyright in one forum and in a
dispute regarding trademark in another forum, and the court ordered joinder pursuant to
More importantly, defendant did not show that it will suffer multiple obligations if
NFT and AL are not joined to the instant action, as required under subsection
(a)(1)(B)(ii). If this court finds that the copyrights in question have entered the public
domain, this determination would have no effect on the obligations defendants may or
may not owe NFT and AL under trademark law. See Frederick Warne Co., 481 F. Supp.
at 1196.Conversely, were the court to determine that the material is not in the public
domain, this court cannot conceive of any possible effect that decision would render on
defendant’s obligations in its actions against NFT and AL. The court’s decision in this
matter will not subject defendant to a substantial risk of multiple obligations; in fact, the
only consequence that would result from joining NFT and AL to the instant action is that
this court would have to consider an unrelated matter concerning trademark rights, as
between defendant and NFT, as well as between defendant and AL. Under these
circumstances, the absent parties are not necessary under Rule 19, and the court may
proceed without joining these parties to the instant action.
Because defendant did not show that the absent parties are necessary parties under
Rules 12(b)(7), the court will deny defendant’s request to join NFT and AL as necessary
parties or to dismiss for lack of indispensable parties.
For the reasons set forth in this opinion, the court will: (1) deny defendant’s Rule
12(b)(1) motion to dismiss; and (2) deny defendants motion for joinder of necessary
parties or dismissal for lack of indispensable parties under Rules 12(b)(7) and 19.
DATED: March 23, 2017
/s/ JOY FLOWERS CONTI
Joy Flowers Conti
Chief United States District Judge
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