Cite as 621 F.Supp. 631 (D.C.N.Y. 1985)
fringement with respect to the foreign film classic, “Ladri Di Biciclette” (“The Bicycle Thief;” hereinafter the “Film”). Defendants Corinth Films, Inc. (“Corinth”) and others[1] counterclaimed for infringement, alleging that they, and not plaintiffs, are entitled to the exclusive United States distribution rights to the Film. Both sides have moved for summary judgment, pursuant to Fed.R.Civ.P. 56, to dismiss the respective claims and have raised numerous and complex issues with respect to their alleged copyrights in the Film. Although this action is brought under the Revised Copyright Act of 1976, 17 U.S.C. §§ 101–810 (1982), the operative facts of this action took place while the Copyright Act of 1909, 17 U.S.C. §§ 1–810 (1976 ed.) (superseded 1976), was still effective,[2] and the parties’ claims to rights in an original, Italian-language Film must be determined in accordance with that statute.
BACKGROUND
In 1948, the Film was published in Italy under the name and ownership of Produzdioni de Sica (“PDS”), an Italian limited liability company apparently controlled by the Film’s director, Vittorio de Sica. In August of 1967, defendant Feiner entered into a contract with PDS for the rights to theatrical, non-theatrical and television exploitation in the United States of an English-language dubbed version of the Film. The contract was to run for a period of ten years. See Exhibits Accompanying Plaintiffs’ Rule 56(b) Motion to Dismiss Counterclaim (“Plaintiffs’ Exhibits”), at A. In 1970, that contract was amended to include the right to distribute an Italian-language version of the Film, with or without subtitles. See Plaintiffs’ Exhibits, at B. The 1970 contract also extended Feiner’s distribution rights through 1992. See id. Feiner, in turn, granted exclusive licenses to defendants Corinth (for non-theatrical distribution) and Jacobs (for theatrical distribution). See Answer to Amended Complaint and Amended Counterclaim, at ¶¶ 23–24. Subsequently, Corinth assumed Jacobs’ license and now claims the exclu-
- ↑ In addition to Corinth, others named as defendants in this action are John Poole and Peter Meyers, President and Vice-President of Corinth, respectively, Arnold Jacobs (“Jacobs”), an individual doing business as A. Jay Film Co., and Richard Feiner and Company, Inc. (“Feiner”). All do business in New York.
- ↑ While the 1976 Act generally became effective on January 1, 1978, section 304(b) of the new Act, 17 U.S.C. § 304(b) (1982) (1976 Act), dealing with renewal of copyrights, was made effective upon the date of enactment, October 19, 1976. See Pub.L. No. 94-553, § 102, 90 Stat. 2541, 2598-99 (1976). However, section 304(b) only applies to renewal registrations made between December 31, 1976, and December 31, 1977, and merely provides for an extension of the renewal term. See 17 U.S.C. § 304(b) (1982) (1976 Act). Here, however, the renewal registration on the Film had to be made prior to December 6, 1976, and therefore the renewal issue is governed by the 1909 Act.
defendants pursuant to Fed.R.Civ.P. 19. Defendants had contended that they would be exposed to a risk of multiple liability without the joinder of Films Incorporated, PAT, PAT International, and Arthur, and that thus they were indispensable parties within the meaning of Rule 19(a). Since these parties have been joined by plaintiffs, the Court, therefore, denies defendants’ Rule 19 motion as moot.
Defendants also object to what they refer to as “the transmutation of GFC and [Italfilm] from voluntary to involuntary plaintiffs without permission from the Court.” See Defendants’ Reply Memo at 4. It seems that in plaintiffs’ prior pleading, GFC and Italfilm were not listed as involuntary plaintiffs. See Amended Complaint. However, in their second amended complaint, plaintiffs stated that Vittorio Balini, upon whose authority GFC and Italfilm were joined to this action, was, in effect, without such authority. See Second Amended Complaint at ¶ 5(c). Therefore, pursuant to Fed.R.Civ.P. 19(a) and the “involuntary plaintiff” doctrine established by the Supreme Court in Independent Wireless Telegraph Co. v. Radio Corp. of America, 269 U.S. 459, 46 S.Ct. 166, 70 L.Ed. 357 (1926), plaintiffs named these entities as involuntary plaintiffs. Defendants allege that plaintiffs violated Fed.R.Civ.P. 15(a) by filing the second amended complaint without obtaining leave of the Court. However, on March 30, 1984, the Court orally granted permission for plaintiffs to file a second amended complaint, partly as a result of defendants’ continued objections that indispensable parties were still missing from this action. Since the Court has now determined that the Film is in the public domain, see infra, the propriety of joining the aforesaid parties as involuntary plaintiffs need not be decided.
