United States District Court, W.D. Pennsylvania
Flowers Conti Chief United States District Judge.
film-production company Team Angry Filmworks, Inc.
(“plaintiff”) calls upon the court to declare
that Philip Francis Nowlan's 1928 science-fiction novella
(“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
• 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.)
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.
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. SeeTeam 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.
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.
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)
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.
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.)
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. Having been fully briefed, defendants'
motion to dismiss and motion to join necessary parties is
ripe for disposition.
Defendant's Motion to Dismiss
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
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. SeeMatthews 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 Heerema Marine Contractors v
Santa Fe Int'l Corp., 582 F.Supp. 445, 448-49
(C.D.Cal. 1984)) (emphasis original).
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 ...