Opinion
16-CV-1318 (GBD) (BCM)
08-17-2022
JOINT STOCK COMPANY "CHANNEL ONE RUSSIA WORLDWIDE," et al., Plaintiffs, v. INFOMIR LLC, et al., Defendants.
AMENDED REPORT AND RECOMMENDATION TO THE HONORABLE GEORGE B. DANIELS
BARBARA MOSES, UNITED STATES MAGISTRATE JUDGE.
Plaintiffs Joint Stock Company "Channel One Russia Worldwide" (Channel One), Closed Joint Stock Company "CTC Network" (CTC), Limited Liability Company "Global Entertainment TV" (GETV), as successor to Limited Liability Company "Comedy TV" (Comedy TV), Closed Joint Stock Company "TV DARIAL" (Darial), Closed Joint Stock Company "New Channel" (New Channel), and Limited Liability Company "Rain TV-Channel" (Rain) are a group of Russian television broadcasters suing to redress the "pirating" and resale of their programming at cut-rate prices to Russian-speaking consumers in the United States, via Internet Protocol Television (IPTV), without authorization or license fees.
In their First Amended Complaint (FAC) (Dkt. No. 211), plaintiffs allege that they produce and broadcast multiple Russian-language television channels (the Channels), offering a variety of original and licensed content (the Programming), which defendants unlawfully "re-transmit . . . over the internet to paying subscribers in the U.S. using password-protected streaming services," thus undercutting sales of the "fully-licensed international versions" of the Channels. FAC ¶¶ 1-4. One such defendant is S.K. Management of New York Inc. (SKM), headquartered in Brooklyn, which owns and operates the website www.gudzon.tv (the Website), through which it provides "unauthorized access to video streams of pirated versions of the Programming" to its paying subscribers in New York. Id. ¶ 44.
SKM freely admits much of the charged conduct. At deposition, its sole owner and chief executive Samuel Katsman testified that SKM provides its customers access to what Katsman calls plaintiffs' "signal," via IPTV, and conceded that SKM has no license or other authorization from plaintiffs (or any agent of plaintiffs) to do so. Katsman Dep. Tr. (Dkt. No. 914-6) at 11-12, 42-43, 61-62, 169. Since 2016, SKM has obtained the signal "from Ukraine," through an individual identified as Oleg Horbatjuk, who "provides service to us and we pay him money." Id. at 38-41, 139, 143-45. SKM, in turn, charges its customers in the U.S. a monthly subscription fee (starting at $19.99 plus tax) to receive a package of 140 to 150 Russian-language TV channels, including at least some of plaintiffs' Channels, which SKM streams to them over the internet. Id. at 31-32, 37-39, 102, 121, 130, 138-39, 143. Katsman emphasized, at deposition, that SKM offers its customers only "local Russian channels," which are "free to air" in Russia, "not the international version[s]" produced for licensed broadcast in the United States and elsewhere. Id. at 39-41.
Now before me for report and recommendation are two motions for partial summary judgment against SKM. Plaintiff Channel One filed its motion on July 29, 2021 (Dkt. No. 913), seeking summary judgment pursuant to Fed.R.Civ.P. 56 on its claim against SKM under § 605(a) of the Federal Communications Act (FCA), 47 U.S.C. § 605(a), including injunctive relief, up to $18.3 million in statutory damages, prejudgment interest, and attorneys' fees. See Ch. One Mem. (Dkt. No. 916) at 10-14, 25. Channel One also seeks summary judgment on SKM's affirmative defenses. Id. at 15-25. The remaining plaintiffs (who refer to themselves as the Broadcaster Plaintiffs and are separately represented), filed their motion on July 30, 2021 (Dkt. No. 924), seeking summary judgment as to SKM's liability under FCA § 605(a) and for direct copyright infringement under the Copyright Act, 17 U.S.C. §§ 101, et seq. See Br. Pl. Mem. (Dkt. No. 926) at 6-8. The Broadcaster Plaintiffs also ask the Court to dismiss SKM's affirmative defenses, apparently pursuant to Fed.R.Civ.P. 12(c), for failure to allege facts sufficient to state any cognizable defense. Id. at 8-14. However, the Broadcaster Plaintiffs do not seek summary judgment as to their damages or other remedies.
At the outset of this action, all plaintiffs were jointly represented by the law firm Dunnington, Bartholow & Miller LLP (Dunnington). That firm now represents only Channel One. The Broadcaster Plaintiffs are represented by Kublanovsky Law LLC. (Dkt. Nos. 865, 871.)
For the reasons that follow, Channel One's motion should be granted, judgment should be entered in its favor on its claim under FCA § 605(a), and it should be awarded injunctive relief, $3,666,000 in damages, and its reasonable attorneys' fees. However, the Broadcaster Plaintiffs have not established their entitlement to summary judgment under either FCA § 605(a) or the Copyright Act. Consequently, their motion should be denied, except with respect to SKM's affirmative defenses, which should be dismissed.
The factual background and procedural history of this case are described in detail in a series of prior opinions and orders, including, but not limited to, Joint Stock Co. Channel One Russia Worldwide v. Infomir LLC, 2017 WL 696126 (S.D.N.Y. Feb. 15, 2017), report and recommendation adopted, 2017 WL 2988249 (S.D.N.Y. Mar. 27, 2017); Joint Stock Co. Channel One Russia Worldwide v. Infomir LLC, 2017 WL 8723937 (S.D.N.Y. Oct. 19, 2017); Joint Stock Co. "Channel One Russia Worldwide" v. Infomir LLC, 2018 WL 2932725 (S.D.N.Y. June 12, 2018) (overruling objections and adopting Discovery Order and Report and Recommendation dated Apr. 25, 2018 (4/25/18 Order) (Dkt. No. 569)); Joint Stock Co. Channel One Russia Worldwide v. Infomir LLC, 2019 WL 4727537 (S.D.N.Y. Sept. 26, 2019), aff'd, 2020 WL 1479018 (S.D.N.Y. Mar. 26, 2020); Joint Stock Co. Channel One Russia Worldwide v. Infomir LLC, 2019 WL 8955234 (S.D.N.Y. Oct. 25, 2019), report and recommendation adopted sub nom. Joint Stock Co. "Channel One Russia Worldwide" v. Infomir LLC, 2020 WL 1467098 (S.D.N.Y. Mar. 26, 2020); Joint Stock Co. Channel One Russia Worldwide v. Infomir LLC, 2021 WL 4810266 (S.D.N.Y. Sept. 30, 2021); Joint Stock Co. "Channel One Russia Worldwide" v. Infomir LLC, 2022 WL 61321 (S.D.N.Y. Jan. 6, 2022). Familiarity with these decisions is assumed.
A. The Complaint
Plaintiffs filed this action on February 19, 2016, originally suing nine defendants, including "Goodzone TV." See Compl. (Dkt. No. 1) ¶ 62. Plaintiffs alleged that all defendants engaged in the "unauthorized interception, copying and distribution" of plaintiffs' Channels and Programming in violation of, inter alia, FCA § 605(a) and the Copyright Act. Compl. ¶¶ 5-6, 92-101, 123-39. In their direct copyright infringement claim, plaintiffs alleged that they (or their affiliates) were the "legal or beneficial owners of the copyrights" in the Channels and Programming; that defendants' "infringing services" violated plaintiffs' exclusive rights under 17 U.S.C. § 106 (including the rights to "reproduce," "distribute," "publicly perform," and "publicly display" their copyrighted works, and to authorize others to do so); and that they were not required to register their copyrights with the United States Copyright Office (which is ordinarily a precondition to suit under the Copyright Act, see 17 U.S.C. § 411(a)) because the Berne Convention for the Protection of Literary and Artistic Works, Sept. 9, 1886, S. Treaty Doc. No. 99-27, entered into force Dec. 5, 1887 (revised at Paris July 24, 1971; amended 1979) (Berne Convention) "requires member states, including the United States, to recognize the copyrights issued with respect to works created in other member states." Compl. ¶¶ 124-33.
B. The First Amended Complaint
On June 24, 2016, after defendant Infomir LLC (Infomir) filed a motion to dismiss the Complaint, plaintiffs cross-moved for leave to amend. (Dkt. No. 78.) On February 15, 2017, I recommended that the cross-motion be granted, see Joint Stock Co. Channel One, 2017 WL 696126, at *24, and on March 27, 2017, the Hon. George B. Daniels, United States District Judge, adopted my recommendation and granted plaintiffs leave to amend. Joint Stock Co. Channel One, 2017 WL 2988249, at *1-2.
As relevant here, the Court held that FCA § 605(a), which "generally prohibits the unauthorized use or publication of wire or radio communications," Int'l Cablevision, Inc. v. Sykes, 997 F.2d 998, 1007 (2d Cir. 1993) (Sykes I), reaches "the unauthorized retransmission of a signal that originated as a satellite transmission, even when it is thereafter received or transmitted over the internet," and even if the defendant did not itself "intercept" the communication. Joint Stock Co. Channel One, 2017 WL 696126, at *7-10. The plaintiff must, however, plead and prove (among other things) that the signal was "transmitted by satellite (or some other form of radio communication) at some point along its journey." Id. at *10 (emphasis in the original). See also Int'l Cablevision, Inc. v. Sykes, 75 F.3d 123, 131 n.5 (2d Cir. 1996) (Sykes II) (there would be no violation of § 605(a) "if it could be proved in a particular case that the interception at issue . . . would not involve any radio-originated communications").
The Court further held that, in order to state a claim for infringement of their Russian copyrights, plaintiffs must "identify the works allegedly infringed," "demonstrate that [they] possess exclusive rights in those works under Russian law," and - if the copyrights are unregistered - establish that the underlying works are not "United States works," as that term is used in the Copyright Act. Joint Stock Co. Channel One, 2017 WL 696126, at *12-13. A copyright plaintiff "must also establish that it meets the standing test of 17 U.S.C. § 501(b), which accords standing only to the legal or beneficial owner of an exclusive right." Id. at *13 (quoting Itar-Tass Russian News Agency v. Russian Kurier, Inc., 153 F.3d 82, 91 (2d Cir. 1998)) (internal quotation marks omitted). "[T]he holder of a nonexclusive license may not sue others for infringement." Id. (quoting Davis v. Blige, 505 F.3d 90, 101 (2d Cir. 2007)) (alteration in the original).
Plaintiffs filed their current pleading on April 5, 2017, naming a total of thirteen defendants, including "Goodzone TV." FAC ¶ 44. Like the original Complaint, the FAC asserts a claim under FCA § 605(a) (Count One) and a direct infringement claim under the Copyright Act (Count Eight). FAC ¶¶ 204-15, 272-91.
Count One alleges that plaintiffs "initially broadcast their programming through various satellites that are intended only for authorized recipients"; that they "license the rights to broadcast and re-broadcast their programs to certain third parties in exchange for a fee"; that defendants "have not received a license from any Plaintiff to de-encrypt[,] broadcast[,] or re-broadcast its programs, nor [have they] received any other permission, express or otherwise, to do so"; but that defendants nonetheless, through their websites, "intentionally pirate, retransmit and publish [plaintiffs'] programs for the sole purpose of their own economic gain and to the detriment of [plaintiffs] and their licensees." FAC ¶¶ 206, 208-09.
Count Eight alleges that plaintiffs (or their affiliates) "are the legal or beneficial owners of the copyrights in the Channels and Programming." FAC ¶ 276. Plaintiffs do not, however, identify any specific "works allegedly infringed," Joint Stock Co. Channel One, 2017 WL 696126, at *12, and do not claim to own copyrights in those specific works. Instead, they allege that "Russian law protects neighboring rights which, as relevant here, are the rights a broadcaster has in its broadcasts including the rights to re-broadcast its broadcasts." FAC ¶ 278. These neighboring rights, according to plaintiffs, are sufficient to confer upon them the exclusive rights set forth in § 106 of the Copyright Act, "as applicable here through the Berne Convention." Id. ¶¶ 275, 280-83. The FAC alleges that defendants infringed those rights, and thus violated the Copyright Act, by streaming the "Programs" (an undefined term), the Channels, and the Programming "over IPTV, without authorization[,] on their websites." Id. ¶¶ 281, 285.
Chapter 70 of the Russian Civil Code covers "Copyright Law," while Chapter 71 covers "The Rights Allied to Copyright" (i.e., "neighboring rights"), including the "Rights of Broadcasting ant Cable-Services Organizations," which are specified in Articles 1329-32. See GRAZHDANSKII KODEKS ROSSIISKOI FEDERATSII [GK RF] [Civil Code] Ch. 70, Ch. 71 Arts. 1329-32 (Russ.) (all subsequent citations are to the Civil Code, which English translation is available at https://www.wipo.int/edocs/lexdocs/laws/en/ru/ru083en.pdf (last visited Feb. 25, 2022)). In the FAC, plaintiffs rely on Art. 1330(2), which (according to plaintiffs) "protects a broadcaster's right to record; reproduce; distribute; and re-transmit its original broadcast," and Art. 1332, which (they say) "provides that all broadcasts that originate in the Russian Federation are protected by Russian law." FAC ¶¶ 179-82, 277-78; see also id. Ex. 14 (Dkt. No. 211-14) (uncertified English translation of Arts. 1329-32). The Russian Civil Code is discussed in more detail in Part IV.C.1 of this Report and Recommendation, infra.
On May 4, 2017, "Goodzone TV" filed its Answer (Ans.) (Dkt. No. 253), generally denying plaintiffs' allegations and interposing 25 affirmative defenses, many of which are in reality legal arguments or denials of matters as to which plaintiffs have the burden of proof. Other defenses relate only to plaintiffs' claims under the Lanham Act and state law, which have since been dismissed. (Dkt. No. 819.) On February 9, 2018, with the parties' consent, the Court substituted SKM for "Goodzone TV" in the case caption. (Dkt. No. 523.)
See, e.g., Ans. at 38 (asserting as a "First Affirmative Defense" that the FAC "fails to allege facts sufficient to state a claim upon which relief may be granted"); id. at 39 (asserting as a "Sixth Affirmative Defense" that "the allegedly infringed works were broadcast first or simultaneously within the United States").
C. Fact Discovery
Fact discovery in this action was contentious. The Court's Initial Case Management and Scheduling Order (Dkt. No. 236) directed the parties to complete fact depositions by October 6, 2017, and to complete all fact discovery by November 17, 2017. That deadline was extended five times (see Dkt. Nos. 378, 429, 525, 569, 617) before fact discovery finally closed on July 31, 2018.
Towards the end of the fact discovery period, the parties disputed whether and to what extent plaintiffs would be required to produce documents evidencing the copyrights they claimed to own in the Programming. On March 6, 2018, plaintiffs committed in writing, through their attorney Raymond J. Dowd of Dunnington, that they "do not intend to base any claims on any particular copyright . . . registrations," because their "copyright claims are based solely on neighboring rights under the Russian Copyright Law which are protected by the Berne Convention." 3/6/18 Dowd Ltr. (Dkt. No. 566-2) at 1. "These neighboring rights," plaintiffs explained, "protect [plaintiffs'] rights in the entirety of the programming created and broadcast in the Russian Federation." Id. Therefore, counsel concluded, plaintiffs "are not required to produce copyright . . . registrations." Id. at 2 (emphasis added). However, that did not resolve the broader question of whether plaintiffs would be required to provide other "discovery substantiating their [copyright] ownership." 4/16/18 Joint Ltr. (Dkt. No. 566) at 6 (emphasis added). On April 16, 2018, defendant Infomir sought an order compelling plaintiffs to produce documents "sufficient to show legal or beneficial ownership by plaintiffs of each work" allegedly infringed. Id. Plaintiffs responded by reiterating that they are relying on their "neighboring rights" in the Programming as a whole, which rights are "protected in the United States pursuant to the Berne Convention." Id.
After a discovery conference on April 19, 2018, during which I noted that plaintiffs "are hanging their hat on neighboring rights and [the] Berne Convention," 4/19/18 Tr. (Dkt. No. 570) at 104, I resolved the dispute as follows:
Infomir seeks an order compelling plaintiffs to produce additional documents substantiating their ownership rights, under Russian law, in the Programming at issue in this action, including agreements and licenses concerning the "legal or beneficial ownership by plaintiffs of each work" at issue in this action[.]
Plaintiffs respond that their copyright claims are based on "neighboring rights" in the Programming as a whole, which rights are protected under Russian law and the Berne Convention, and therefore that they need not establish the actual or beneficial ownership of the copyrights to any particular portion of that Programming....
Since plaintiffs do not base any of their claims in this action on their rights (legal or beneficial) to the individual works comprising the Programming, they need not produce agreements, licenses, or other documents concerning the existence or transfer of their rights in such individual works. But since plaintiffs do claim "neighboring rights" in the Programming as compiled for broadcast, they must promptly produce documents sufficient to show that they possess such rights as to that Programming.
4/25/18 Order at 5-6 (internal record citations omitted). See also Joint Stock Co. "Channel One Russia Worldwide", 2018 WL 2932725, at *4 (overruling objections to 4/25/18 Order in light of, among other things, plaintiffs' reliance on "'neighboring rights' in the Programming protected under Russian law and the Berne Convention").
The parties also disputed the extent of the discovery to which defendants were entitled concerning the variance between the "local Russian channels" that SKM rebroadcasts via IPTV (that is, the version of the Channels first broadcast "free to air" in the Russian Federation) and the modified version that some plaintiffs produce for international consumption and license to various non-parties for rebroadcast in the United States. See 4/16/18 Joint Ltr. at 7-8. Infomir sought "an order compelling plaintiffs to produce 'all agreements, contracts, licenses,' and other documents showing 'exactly what content, or versions of their Channels, plaintiffs have authorized their IPTV, cable and satellite distributors to distribute within the United States,' as well as 'all agreements, contracts, licenses,' and other documents sufficient to show that that Programming at issue here was not published first or 'simultaneously' in the United States." 4/25/18 Order at 7 (quoting 4/16/18 Joint Ltr. at 7). The Court held that such discovery would be "unduly burdensome and not proportional to the needs of the case," particularly given that "the existence and extent of the differences can easily be determined by comparing the actual broadcasts." Id. at 7-8.
The parties agreed, by this point, "that the version of plaintiffs' Programming which is broadcast under license in the United States is different from the version broadcast in the Russian Federation, in that the U.S.-licensed version is time-shifted, includes different advertisements, and omits certain content," but "disagree[d] at to the significance of these differences." 4/25/18 Order at 6-7. Defendants' theory was that the differences were "so 'minor' as to suggest that 'plaintiffs' unregistered content is first or simultaneously broadcast in the United States," which would make all of the Programming at issue here a "United States work," such that plaintiffs could not proceed under the Copyright Act "'without registration.'" Id. at 7 (quoting 4/16/18 Joint Ltr. at 7). Plaintiffs disagreed, arguing that if defendants' position were accepted it would "eviscerate" copyright protection under the Berne Convention. Id.
D. Expert Discovery
Expert discovery, which was originally scheduled to close on February 28, 2018 (Dkt. No. 236), took even longer than fact discovery (due in part to pandemic-related delays), and was equally contentious. After multiple extensions and a temporary stay (Dkt. Nos. 617, 626, 658, 679, 796, 798, 800, 806-07, 811, 832, 837, 851), affirmative expert reports were finally served on February 5, 2020; rebuttal reports were served on August 7, 2020; and expert depositions were completed on October 28, 2020. Although SKM and Infomir were by this time the only remaining defendants in this action (the others having defaulted, settled, or been dismissed voluntarily), plaintiffs did not serve any expert reports related to SKM, and SKM did not serve any expert reports at all.
On February 19, 2021, plaintiffs and Infomir filed cross-Daubert motions, seeking to exclude all or part of one another's expert opinions. On September 30, 2021, I ruled on the Daubert motions, excluding certain portions of various experts' proposed testimony. Joint Stock Co. Channel One, 2021 WL 4810266, at *25.
E. The Instant Motions
During fact discovery, plaintiffs filed - but later withdrew - two separate motions for partial summary judgment, including one against SKM (Dkt. No. 259), which was fully briefed before it was withdrawn (Dkt. No. 522), and one against Infomir. (Dkt. No. 547.) When the second summary judgment motion was withdrawn, on October 9, 2018, the Court noted that the motions had "imposed unnecessary burdens and costs on the opposing parties," and concluded: "In order to minimize such inefficiencies going forward, future summary judgment motions must await the close of all discovery." (Dkt. No. 679.)
After the close of all discovery, plaintiffs filed the instant motions, to which SKM responded - after several extensions - on October 26, 2021, with an Omnibus Memorandum of Law (SKM Mem.) (Dkt. No. 940) addressing both motions. Before that, on September 1, 2021, Infomir interposed its own set of opposition papers, including two counter-statements of material fact (Dkt. Nos. 927, 930), a declaration (Dkt. No. 929), and a brief (Infomir Mem.) (Dkt. No. 928). Infomir explained that even though plaintiffs' motions seek no relief against it, some of plaintiffs' arguments and evidence "overlap with the Amended Complaint's allegations directed at Infomir LLC." Infomir Mem. at 1.
On November 30, 2021, Channel One filed two reply briefs: one in response to Infomir's brief (Dkt. No. 951) and another in response to SKM's omnibus memorandum (Ch. One Reply Mem.) (Dkt. No. 952). The Broadcaster Plaintiffs filed a single reply brief (Br. Pl. Reply Mem.) (Dkt. No. 953), in which they addressed Infomir's arguments as well as SKM's.
II. LEGAL STANDARDS
A. Summary Judgment
A court may grant a motion for summary judgment "if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." Fed.R.Civ.P. 56(a); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986); Holt v. KMI-Cont'l, Inc., 95 F.3d 123, 128-29 (2d Cir. 1996). The moving party always bears the initial burden of informing the court of the basis for the motion and identifying those portions of the record that demonstrate the absence of a genuine dispute as to any material fact. Fed.R.Civ.P. 56(c); Celotex, 477 U.S. at 323; Koch v. Town of Brattleboro, Vermont, 287 F.3d 162, 165 (2d Cir. 2002). However, "[t]he showing necessary to satisfy this initial burden varies depending on whether the movant would bear the burden of proof as to the particular issue at trial." Read Prop. Grp. LLC v. Hamilton Ins. Co., 2018 WL 1582291, at *5 (E.D.N.Y. Mar. 30, 2018). If the burden at trial would fall on the nonmoving party (such as where a defendant seeks summary judgment on a plaintiff's claim), the moving party may satisfy its initial burden either by pointing to the absence of evidence on an essential element of the nonmoving party's claim, Cordiano v. Metacon Gun Club, Inc., 575 F.3d 199, 204 (2d Cir. 2009) (citing Celotex., 477 U.S. at 322-23), or by submitting evidence that "negates an essential element of the non-moving party's claim." Nick's Garage, Inc. v. Progressive Cas. Ins. Co., 875 F.3d 107, 114 (2d Cir. 2017) (quoting Farid v. Smith, 850 F.2d 917, 924 (2d Cir. 1988)).
The same is true where a plaintiff seeks summary judgment on a defendant's affirmative defenses. See F.D.I.C. v. Giammettei, 34 F.3d 51, 54 (2d Cir. 1994) ("Where a plaintiff uses a summary judgment motion, in part, to challenge the legal sufficiency of an affirmative defense - on which the defendant bears the burden of proof at trial - a plaintiff may satisfy its Rule 56 burden by showing that there is an absence of evidence to support [an essential element of] the [non-moving party's] case.") (internal quotations omitted and alterations in the original); accord Crocker v. Polaris Media Grp., Inc., 1993 WL 148887, at *3 (S.D.N.Y. Apr. 30, 1993).
If, by contrast, the burden at trial would fall on the moving party (such as where a plaintiff seeks summary judgment on one or more of its claims), its "own submissions in support of the motion must entitle it to judgment as a matter of law." Albee Tomato, Inc. v. A.B. Shalom Produce Corp., 155 F.3d 612, 618 (2d Cir. 1998). In this scenario, the moving party "must lay out the elements of its claim, citing the facts it believes satisfies those elements, and demonstrating why the record is so one-sided as to rule out the prospect of the nonmovant prevailing." 10A Charles A. Wright, Arthur R. Miller & Mary K. Kane, Federal Prac. & Proc. § 2727.1, at 492 (4th ed. 2021); accord Read Prop. Grp., 2018 WL 1582291, at *5; Peterson v. Pan Am Railways, Inc., 2015 WL 2451227, at *8 (N.D.N.Y. May 21, 2015) (denying summary judgment to plaintiff for failure to "[i]ndisputably establish" that his injury was foreseeable, which was an "essential element of Plaintiff's claim"). The motion must be supported by "admissible evidence." In re Refco Inc. Secs. Litig., 2013 WL 12191891, at *6 (S.D.N.Y. Mar. 11, 2013); see also Barnes v. Carolan, 2018 WL 3736792, at *2 (S.D.N.Y. July 20, 2018) (recommending denial of plaintiff's summary judgment motion because he relied only on his "unverified pleadings," which "cannot provide a basis for summary judgment"), report and recommendation adopted, 2018 WL 3733945 (S.D.N.Y. Aug. 6, 2018).
Notwithstanding its title ("First Amended Verified Complaint"), the FAC is verified only by Alexey E. Efimov, a General Director of Channel One, and only with respect to the allegations made "on behalf of" Channel One. FAC Ex. 21 (Dkt. No. 211-21).
If the moving party fails to make the required initial showing, "the court must deny the motion, even if the opposing party has not introduced contradictory evidence in response." 10A Fed. Prac. & Proc. § 2727.1; see also In re Refco Inc. Secs. Litig., 2013 WL 12191891, at *3 ("[I]f the Plaintiffs[] have not presented a sufficient showing of entitlement to summary judgment, then the Defendant[] ha[s] no burden of going forward at all."). If, on the other hand, the moving party satisfies its initial burden, the burden shifts to the non-moving party to establish a genuine dispute of material fact sufficient to prevent the entry of judgment against it. Celotex, 477 U.S. at 323-24; Santos v. Murdock, 243 F.3d 681, 683 (2d Cir. 2001). At this point, the non-moving party must do more than "simply show that there is some metaphysical doubt as to the material facts." Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586 (1986). Rather, it must present specific, admissible evidence showing that there is a genuine dispute as to the material facts. Celotex, 477 U.S. at 324; see also Jeffreys v. City of New York, 426 F.3d 549, 554 (2d Cir. 2005) (the nonmoving party must offer "some hard evidence showing that its version of the events is not wholly fanciful") (quoting D'Amico v. City of New York, 132 F.3d 145, 149 (2d Cir. 1998)). That evidence must be sufficient to permit a reasonable jury to return a verdict in the non-moving party's favor. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986); Nick's Garage, 875 F.3d at 113. Thus, "conclusory statements, conjecture, or speculation by the party resisting the motion will not defeat summary judgment." Kulak v. City of New York, 88 F.3d 63, 71 (2d Cir. 1996).
In this District, the moving party must submit a "short and concise statement, in numbered paragraphs," of the material facts that it contends to be undisputed. Local Civ. R. 56.1(a). Each statement "must be followed by citation to evidence which would be admissible, set forth as required by Fed.R.Civ.P. 56(c)." Local Civ. R. 56.1(d). If no admissible evidence is cited (or if the cited evidence does not support the statement), the "unsupported assertions" must be "disregarded." Giannullo v. City of New York, 322 F.3d 139, 140 (2d Cir. 2003); see also Holtz v. Rockefeller & Co., Inc., 258 F.3d 62, 74 (2d Cir. 2001) ("[A] Local Rule 56.1 statement is not itself a vehicle for making factual assertions that are otherwise unsupported in the record.").
The non-moving party must respond in kind, with numbered paragraphs that correspond "to each numbered paragraph in the statement of the moving party," Local Civ. R. 56.1(b), followed by citations to admissible evidence. Local Civ. R. 56.1(d). To the extent the moving party's statements are properly supported and not "specifically controverted" by the non-moving party, Local Civ. R. 56.1(c), the moving party's statement may be "deemed to be admitted for purposes of the motion." Id.
In evaluating the record, the court must construe the evidence in the light most favorable to the non-moving party and draw all reasonable inferences in the non-moving party's favor. Anderson, 477 U.S. at 255; In re "Agent Orange" Prod. Liab. Litig., 517 F.3d 76, 87 (2d Cir. 2008). "In applying this standard, the court should not weigh evidence or assess the credibility of witnesses. These determinations are within the sole province of the jury." Frost v. New York City Police Dep't, 980 F.3d 231, 242 (2d Cir. 2020) (quoting Hayes v. New York City Dep't of Corr., 84 F.3d 614, 619 (2d Cir. 1996)), pet. for cert. docketed, No. 20-1788 (U.S. June 23, 2021).
B. The FCA
The third sentence of FCA § 605(a) states that "[n]o person not being entitled thereto shall receive or assist in receiving any interstate or foreign communication by radio and use such communication . . . for the benefit of another not entitled thereto." A defendant is liable under § 605(a) "if a plaintiff can show that the defendant 'received a satellite-originated signal and then retransmitted that signal to third parties (for example, via IPTV) without authorization and for financial gain.'" Joint Stock Company "Channel One Russia Worldwide" v. Russian TV Co., 2021 WL 4341053, at *3 (S.D.N.Y. Sept. 22, 2021) (Russian TV Co.) (quoting Joint Stock Co. Channel One, 2019 WL 8955234, at *11). The FCA is a "strict liability" statute, in the sense that "its violation results in liability regardless of the intent of the violator." Russian TV Co., 2021 WL 4341053, at *4. "Any person aggrieved by a violation of [§ 605(a)] may bring a civil action" for actual or statutory damages for each violation. 47 U.S.C. § 605(e)(3)(C). This includes "any person with proprietary rights in" the communications at issue, 47 U.S.C. § 605(d)(6), including distributors of satellite cable programming. Id. Thus, "an 'aggrieved person' under the [FCA] does not have to be a copyright holder." Don King Prods., Inc. v. Torres Liquor Store, 2006 WL 2530187, at *3 (D.P.R. Aug. 31, 2006).
If the aggrieved person establishes a violation of § 605(a), the court may "grant . . . final injunctions on such terms as it may deem reasonable," award either actual or statutory damages (in the amount of $1,000 to $10,000 "for each violation," as the court "considers just"), and grant reasonable attorneys' fees and costs to the prevailing party. 47 U.S.C. §§ 605(e)(3)(B)-(C).
C. The Copyright Act
"'To establish a claim of copyright infringement, a plaintiff must establish (1) ownership of a valid copyright and (2) unauthorized copying or a violation of one of the other exclusive rights afforded copyright owners pursuant to the Copyright Act.'" Arista Records LLC v. Usenet.com, Inc., 633 F.Supp.2d 124, 146 (S.D.N.Y. 2009) (quoting Byrne v. British Broad. Corp., 132 F.Supp.2d 229, 232 (S.D.N.Y. 2001)). Copyright infringement is also "a strict liability offense, meaning 'intent or knowledge is not an element of infringement.'" Spin Master Ltd. v. Alan Yuan's Store, 325 F.Supp.3d 413, 422 (S.D.N.Y. 2018) (quoting Fitzgerald Publ'g. Co. v. Baylor Publ'g Co., 807 F.2d 1110, 1113 (2d Cir. 1986)).
Among the exclusive rights afforded copyright owners under the Copyright Act is the right, "in the case of . . . motion pictures and other audiovisual works, to perform the copyrighted work publicly." 17 U.S.C. § 106(4). Where an entity "sells a service that allows subscribers to watch television programs, many of which are copyrighted, almost as they are being broadcast," "us[ing] its own equipment, outside of its users' homes," and "transmits [the programs] to large numbers of paying subscribers who lack any prior relationship to the works," it "publicly performs" those works within the meaning of § 106(4). Am. Broadcasting Cos., Inc. v. Aereo, Inc., 573 U.S. 431, 442-43, 449 (2014).
Holders of copyrights in "United States works" may not sue under the Copyright Act "until preregistration or registration has been made." DigitAlb, Sh.a v. Setplex, LLC, 284 F.Supp.3d 547, 554 (S.D.N.Y. 2018) (quoting 17 U.S.C. § 411(a)). For purposes of § 411(a), a "published" work is a "United States work" only if "it is first published (1) in the United States; [or] (2) simultaneously in the United States and another treaty party whose law grants copyright protection for at least the term provided in the United States." Id. (citing 17 U.S.C. § 101).
By contrast, holders of copyrights in non-United States works need not register those copyrights in the United States as a precondition to suit under the Copyright Act - provided that the country in which the works were "first published" is a signatory to the Berne Convention. See Setplex, 284 F.Supp.3d at 555 (works "first published outside the United States in a foreign country that is a signatory to the Berne Convention" are "exempt from registration"); see also The Football Ass'n Premier League Ltd. v. YouTube, Inc., 633 F.Supp.2d 159, 162 (S.D.N.Y. 2009) (§ 411(a), "which requires . . . registration before any copyright infringement suit may be brought, is limited to U.S. works"). Russia has been a signatory to the Berne Convention since December 9, 1994.8 Thus, the holder of an unregistered Russian copyright may sue under the Copyright Act -unless the underlying work was first published in the United States or "simultaneously within and outside the United States," Setplex, 284 F.Supp.3d at 555, making it a United States work.
It is the plaintiff's burden to plead and prove that the work is not a United States work. Setplex, 284 F.Supp.3d at 555; see also Kernel Recs. Oy v. Mosley, 694 F.3d 1294, 1304-05 (11th Cir. 2012) ("[A] plaintiff that claims his published work is exempt from the registration requirement must prove that the first publication occurred abroad."); Dish Network L.L.C. v. Fraifer, 2020 WL 1515938, at *10 (M.D. Fla. Jan. 31, 2020) (a plaintiff claiming exemption from the registration requirement "must prove that the claimed publication in a treaty party foreign country actually occurred"), report and recommendation adopted, 2020 WL 1512090 (M.D. Fla. Mar. 30, 2020), motion to certify appeal denied, 2020 WL 3567297 (M.D. Fla. July 1, 2020); Elohim EPF USA, Inc. v. Total Music Connection, Inc., 2015 WL 12655484, at *4 (C.D. Cal. Nov. 19, 2015) ("[T]he party seeking to protect a work must first establish that the subject of copyright is not a United States work.").
See "Contracting Parties, Berne Convention," World Intell. Prop. Org., https://wipolex.wipo.int/e n/treaties/ShowResults?searchwhat=C&treatyid=15 (last visited Feb. 24, 2022).
III. FACTS
The following facts, which are undisputed unless otherwise noted, are taken from (i) Channel One's Rule 56.1 Statement of Material Facts (Ch. One R. 56.1 Stmt.) (Dkt. No. 920) and its underlying evidentiary materials, including the declaration of Alexander Shprekher (Shprekher Decl.) (Dkt. No. 917), which annexes two exhibits, and the declaration of Channel One's attorney Hardin P. Rowley (Rowley Decl.) (Dkt. No. 914), which annexes 53 exhibits (among them a number of previously-filed affidavits and declarations); (ii) the Broadcaster Plaintiffs' Rule 56.1 Statement of Material Facts (Br. Pl. R. 56.1 Stmt.) (Dkt. No. 926-1) and its underlying evidentiary materials, including the declaration of their attorney Eugene D. Kublanovsky (Kublanovsky Decl.) (Dkt. No. 925), which annexes 11 exhibits; (iii) SKM's Counter-Statement of Material Facts to Channel One (SKM-Ch. One R. 56.1 Stmt.) (Dkt. No. 9401); (vi) SKM's Counter-Statement of Material Facts to the Broadcaster Plaintiffs (SKM-Br. Pl. R. 56.1 Stmt.) (Dkt. No. 940-2); (v) the reply declaration of attorney Rowley (Dkt. No. 950), which annexes two exhibits; (vi) the reply declaration of the Broadcaster Plaintiffs' attorney Erik Dykema (Dkt. No. 953-1), which annexes one exhibit; and (vii) other materials in the record, as permitted by Fed.R.Civ.P. 56(c)(3).
In determining whether plaintiffs have shown "that there is no genuine dispute as to any material fact," Fed.R.Civ.P. 56(a), I have not considered the counterstatements of material fact submitted by Infomir. Although Infomir is a party to this action, plaintiffs' claims against Infomir are distinct from their claims against SKM, see Joint Stock Co. Channel One, 2021 WL 4810266, at *2-4 (describing plaintiffs' theories of liability as against Infomir), and Infomir is not the target of plaintiffs' pending summary judgment motions. Moreover, Infomir never sought or received permission to file what are in effect unauthorized amicus curiae papers on SKM's behalf.
A. Channel One
Channel One is a Russian joint stock company headquartered in Moscow. Ch. One R. 56.1 Stmt. ¶ 1; FAC ¶ 6. It produces various televisions channels, including its "main channel," Perviy Kanal (sometimes referred to as "Channel One Russia"), which is first broadcast, via satellite, in the Russian Federation, where it is a "must carry" and "free-to-air." Ch. One R. 56.1 Stmt. ¶¶ 3-4, 120, 122; Shprekher Decl. ¶¶ 8-9, 26 & Ex. 2 (Dkt. No. 917-2).
Channel One also produces modified versions of its Programming for international audiences, including Channel One-US, which is broadcast by its licensees in the United States. Ch. One R. 56.1 Stmt. ¶¶ 5-7; Shprekher Decl. ¶¶ 10-11, 13. Channel One-US is time-shifted (so that programs broadcast in the morning in Russia will be seen in the morning in the United States, while programs broadcast in the evening in Russia will be seen in the evening in the United States). Ch. One. R. 56.1 Stmt. ¶ 10; Shprekher Decl. ¶ 18. Additionally, there are some differences in the content offered, "due to license agreements." Ch. One R. 56.1 Stmt. ¶ 11; Shprekher Decl. ¶ 19. For example, the Russian version of "The Voice," along with "certain sporting events and Hollywood films," are "licensed only for Russia and cannot be re-broadcast in the U.S." Shprekher Decl. ¶ 19. Finally, Perviy Kanal and Channel One-US have different advertising, in that Channel One-US inserts advertisements "from local small businesses in the United States that cater to Russian speakers." Ch. One R. 56.1 Stmt. ¶ 12; Shprekher Decl. ¶ 20.
SKM does not dispute any of Channel One's factual assertions about the differences between Perviy Kanal and Channel One-US. Rather, it responds with a legal argument: that the differences between the versions are "trivial and dictated by business necessity," and therefore that Perviy Kanal and Channel One-US are "legally identical for purposes of Copyright law." SKM-Ch. One R. 56.1 Stmt. ¶ 11. Even if this could be characterized as a dispute of fact, it would not be a dispute of material fact, because Channel One does not seek summary judgment on any copyright claim.
Channel One licenses Channel One-US to various cable and IPTV operators in the United States, to reach the "Russian-speaking diaspora that settled in New York after the fall of the Soviet Union." Ch. One R. 56.1 Stmt. ¶ 137; Shprekher Decl. ¶¶ 15-16. Among those licensees are DIRECTV, Optimum, Spectrum, Xfinity, Matvil TV, and (at one time) Kartina. Ch. One R. 56.1 Stmt. ¶¶ 138-40; Shprekher Decl. ¶¶ 40-42. Perviy Kanal, however, is not licensed for broadcast in the United States "by any means." Ch. One R. 56.1 Stmt. ¶ 127; Shprekher Decl. ¶¶ 28-29. Nor is it available via any satellite with a U.S. "footprint." Ch. One R. 56.1 Stmt. ¶ 127; Shprekher Decl. ¶ 33; see also Katsman Dep. Tr. at 42 (explaining that "if you put up a dish in your window" in New York, "you won't be able to view this channel," meaning Perviy Kanal, "because it's very far away, so you won't be able to get the signal").
Once again, SKM does not dispute any of these facts. Rather, it "objects" to the paragraphs in which Channel One names its U.S. licensees as "improper" because "plaintiffs refused to produce any of their licensing agreements" during discovery. SKM-Ch. One R. 56.1 Stmt. ¶¶ 138-39. The objection is misplaced. As noted above, the Court declined to compel plaintiffs to produce their licensing agreements with their U.S. distributors because there was an easier way to determine "exactly what content, or versions of their Channels," plaintiffs authorized for distribution within the United States. 4/25/18 Order at 7. Plaintiffs never argued (and this Court never ruled) that the identities of the licensees were beyond the reach of discovery. Nor, for that matter, did defendants require discovery to identify those licensees, who - by definition - openly offer plaintiffs' modified Programming to the public. See, e.g., 4/16/18 Joint Ltr. at 7-8 (discussing plaintiffs' licensees, including Optimum, Matvil TV, and Kartina).
SKM is not licensed or otherwise authorized to broadcast Perviy Kanal (or any other Channels offered by Channel One). Ch. One R. 56.1 Stmt. ¶ 142; Shprekher Decl. ¶¶ 45-52; Katsman Dep. Tr. at 61, 156-57. Nonetheless, after purchasing "the signal" or "the channels" from its supplier in Ukraine, on a no-questions-asked basis, SKM retransmits Perviy Kanal to its U.S. subscribers, via IPTV, in exchange for subscription fees. Ch. One R. 56.1 Stmt. ¶¶ 169-70; Katsman Dep. Tr. at 12, 31-32, 39-43, 62, 113, 121, 130, 139, 143-45, 156-69, 185-86; Rowley Decl. Ex. 21 (Dkt. No. 914-21).
Katsman testified that he did not know how his Ukrainian supplier, "Oleg," "acquires the television signals." Katsman Dep. Tr. at 155-56.
B. Broadcaster Plaintiffs
The Broadcaster Plaintiffs contend that SKM violates the FCA and the Copyright Act by broadcasting the TNT-Comedy Channel (TNT); the "CHE" TV Channel (CHE); the "Domashny" Channel (Domashny); and the "Dozhd" Channel (Dozhd). See FAC ¶¶ 19-20 (CHE), 21-22 (Domashny), 23-25 (TNT); 26-29 (Dzohd); Affidavit of Christopher Vidulich dated August 18, 2016 (8/18/16 Vidulich Aff.) (Dkt. No. 211-16) ¶¶ 3-8 (attached to the FAC as Ex. 16). In their bare-bones Rule 56.1 statement, however, they make only a handful of factual assertions about these Channels, some of them in exceedingly broad terms: that one of the Broadcaster Plaintiffs "produces, owns the copyrights of, and is the authorized broadcaster" of each Channel (except for TNT, as to which they do not even claim that much); that SKM is not authorized to broadcast any of the Channels; but that SKM nonetheless "does or has broadcast" each of them. Br. Pl. R. 56.1 Stmt. ¶¶ 6-16. Conspicuously absent from the Broadcaster Plaintiffs' moving papers is any information about how or by what technology the allegedly infringed Channels are first broadcast; where, when, and how they were first "published" (a different question entirely, see Setplex, 284 F.Supp.3d at 556); how the Broadcaster Plaintiffs came to "own the copyrights" to the Channels; whether a modified version is produced for distribution in the United States (or elsewhere); and -if so - how that version differs from the original (unmodified) Russian version that SKM obtains from Ukraine and provides to its U.S. customers through gudzon.tv.
1. GETV (TNT)
Original plaintiff Comedy TV alleged, in the FAC, that it "produce[d]" TNT, which it described as "an international version of the Russian TNT TV channel created for the Russianspeaking population living outside the Russian Federation, as well as Russian and Russianspeaking tourists worldwide." FAC ¶ 23.
Successor plaintiff GETV now asserts that it "owns all of the rights, copyrights, and assets of, and is the authorized broadcaster of, Comedy TV." Br. Pl. R. 56.1 Stmt.¶ 5 (emphasis added). GETV does not assert, nor point to any admissible evidence showing, that it owns any copyrights in or is authorized to broadcast TNT. Instead, it cites to a single piece of evidence: the testimony of Andrey Chistov, GETV's Deputy Director for Sales, who confirmed at deposition that GETV "owns all of the rights and assets of Comedy TV." Chistov Dep. Excerpt (Kublanovsky Decl. Ex. D (Dkt. No. 925-4)) at 46. In the portion of his deposition testimony excerpted by the Broadcaster Plaintiffs, Chistov says nothing at all about copyrights - or, for that matter, about broadcasting. To the contrary: he explains that GETV "does distribution," of the international version of TNT, "internationally only." Id. at 31.
In its counter-statement of material facts, SKM disputes GETV's assertion of copyright ownership, arguing that it has failed to produce any admissible evidence showing that it holds any copyrights (registered or unregistered) in any version of TNT. SKM-Br. Pl. R. 56.1 Stmt. ¶ 5. Additionally, SKM points to a declaration that Chistov executed on April 10, 2018 (Chistov Decl.) (Dkt. No. 574-2), in which he explains that there are two versions of TNT: "TNT-Russia," which is "first broadcast in the Russian Federation via satellite," where is it "free-to-air," and "TNT-International" (which Chistov sometimes calls "TNT-US"), which is time-shifted and otherwise modified, and which GETV transmits to the United States, where it is "made available to licensees like Amazon Prime, Verizon, and Optimum." Chistov Decl. ¶¶ 13-14, 28-29; 32-39.
In this action, GETV clearly accuses SKM of re-transmitting, to its U.S. customers, "the TNT-Russia programming intended only for distribution in the Russian Federation." Chistov Decl. ¶ 49 (emphasis in the original); see also id. ¶ 63 (attesting that, while in New York on April 10, 2018, Chistov "personally viewed TNT-Russia programming made available on the Goodzone Website"). However, as SKM points out, GETV just as clearly does not produce or "play any role" in the "domestic broadcast" or "distribution" of TNT-Russia. SKM-Br. Pl. R. 56.1 Stmt. ¶ 5; Chistov Dep. Tr. (Dkt. No. 929-5) at 89-90. A different entity, GPMR TV, "produces [the] domestic versions," id. at 35, while GETV - the plaintiff in this action - "produces and distributes [the] international versions" for international markets. Id. at 35.
SKM "is not authorized to broadcast the TNT Channel." SKM-Br. Pl. R. 56.1 Stmt. ¶ 6. Nonetheless, it "does or has broadcast the TNT Channel." Id. ¶ 7.
The evidence to which the Broadcaster Plaintiffs cite for this point is an affidavit executed by a Dunnington paralegal who attests that, on August 12, 2016, he was able to view "the TNT Channel" through the Website, and furnishes a corroborating screen shot. See 8/18/16 Vidulich Aff. ¶¶ 3-4 & Ex. 2. SKM argues that Vidulich has "zero credibility," noting that this Court previously found - in the context of a sanctions motion made against plaintiffs by Infomir - that Vidulich made false statements, in affidavits and at deposition, concerning certain evidence in this action. SKM-Br. Pl. R. 56.1 Stmt. ¶ 7; see also Joint Stock Co. Channel One, 2019 WL 4727537, at *2, 32-35. However, the Court may not weigh witness credibility on summary judgment. Frost, 980 F.3d at 242. Moreover, SKM has never denied - and does not now deny - that it transmits TNT-Russia to its paying customers in New York over the internet. Nor could it, given Katsman's admission, at deposition, that SKM was showing "local versions, Russian versions," of various channels, including "TNT." Katsman Dep. Tr. at 41, 130; see also Chistov Decl. ¶ 63. I therefore accept, as an undisputed fact, that SKM re-transmits TNT-Russia via IPTV.
2. Darial (CHE) and New Channel (Domashny)
Darial and New Channel assert that they "produce[], own[] the copyrights of, and [are] the authorized broadcaster[s] of" the CHE Channel and Domashny Channel, respectively. Br. Pl. R. 56.1 Stmt. ¶¶ 8, 11. To support these statements, they cite two items: the FAC (which is not evidence) and the deposition testimony of Alexander Kostyuk, the Chief Strategic Development Officer of CTC Media, the parent company of Darial and New Channel. Br. Pl. R. 56.1 Stmt. ¶¶ 8, 11; Kostyuk Dep. Excerpt (Kublanovsky Decl. Ex. E (Dkt. No. 925-5)) at 7, 27. In the portion of his deposition testimony excerpted by the Broadcaster Plaintiffs, Kostyuk states that Darial produces CHE and broadcasts the "internal Russian version" free-to-air in the Russian Federation. Kostyuk Dep. Excerpt at 27. He says nothing about Domashny, and nothing about copyrights.
Notwithstanding the holes in the Broadcaster Plaintiffs' evidentiary showing, SKM does not dispute that Darial and New Channel are the producers and authorized broadcasters of CHE and Domashny, respectively. SKM-Br. Pl. R. 56.1 Stmt. ¶¶ 8, 11. It does dispute plaintiffs' claim of copyright ownership, arguing - again - that they have failed to produce any admissible evidence that they "own[ ] copyrights to any of the programming at issue." Id. SKM also points out, correctly, that plaintiffs "withdrew all claims based upon based upon any particular copyright . . . registration," id., choosing to rely instead "solely on neighboring rights." 3/6/18 Dowd Ltr. at 1.
SKM "is not authorized to broadcast the CHE channel" or "the Domashny channel." Br. Pl. R. 56.1 Stmt. ¶¶ 9, 12. Nonetheless, it "does or has broadcast" both channels. Id. ¶¶ 10, 13. The affidavit that plaintiffs rely on for this point states that, in August 2016, paralegal Vidulich was able to view both CHE and Domashny through SKM's Website - but does not specify whether he viewed the domestic or international versions. See 8/18/16 Vidulich Aff. ¶¶ 6-7 & Exs. 4-5.
3. Rain (Dozhd)
Rain asserts that it "produces a channel" including "the Russian Brand . . . Dozhd" and that it "owns the copyrights to, and is the authorized broadcaster of, Dozhd," citing the FAC (which, as noted above, is not evidence) and the deposition testimony of Natalya V. Sindeeva, Rain's Chief Executive Officer. Br. Pl. R. 56.1 Smt. ¶ 14; Sindeeva Dep. Excerpt (Kublanovsky Decl. Ex. F (Dkt. No. 925-6)). When asked whether Rain has "copyrights to any of the programming it broadcasts," Sindeeva replied, "I'm not sure I'm very good with all of the legal terms here, but everything that we produce we are the authors of that. Everything belongs to Rain TV." Sindeeva Dep. Excerpt at 90. She added, "Well, I don't know how to put it but everything is ours because we have a media license." Id.
Elsewhere in her deposition (but unmentioned by either plaintiffs or SKM), Sindeeva testified that - unlike its co-plaintiffs in this action - Rain does not provide any "free to air" programming. See Sindeeva Dep. Tr. (Dkt. No. 929-9) at 30. It lacks the "technical capabilities" to do so. Id. at 34. Rather, "Rain is the one and the only channel that is accessible only by subscription, and only through a subscription, and only encrypted." Id. at 30. In addition to subscribing "directly to Rain TV," in which case the subscriber receives "a login" to "access the website" from "anywhere in the world," consumers can access its programming "through apps, through websites, through Google Play and Apple TV," and (outside of the Russian Federation) through contracted "OTT operators and cable operators." Id. at 21, 36-38.
SKM accepts that Rain produces and is the authorized broadcaster of Dozhd, but once again disputes its assertion of copyright ownership, for lack of admissible evidence, SKM-Br. Pl. R. 56.1 Stmt. ¶ 14, and points out that plaintiffs withdrew all claims based on any particular copyright registration, id., in favor of "neighboring rights." 3/6/18 Dowd Ltr. at 1.
SKM "is not authorized to broadcast the Dozhd channel," Br. Pl. R. 56.1 Stmt. ¶ 15 (citing the First Amended Complaint, which, again, is not evidence), but nonetheless does so. Br. Pl. R. 56.1 Stmt. ¶ 16 (citing 8/18/16 Vidulich Aff. ¶ 8 & Ex. 6).
C. SKM
Sam Katsman, the owner and chief executive officer of SKM, incorporated the company in New York on April 7, 2006. Ch. One R. 56.1 Stmt. ¶¶ 13, 16-17; Rowley Decl. Ex. 9 (Dkt. No. 914-9); Declaration of Raymond J. Dowd dated Oct. 19, 2017 (Dowd Decl.) Exs. H-J (Dkt. Nos. 384-8-10). SKM operates out of Brooklyn and owns, operates, and manages the Website (gudzon.tv), which is its only line of business. Ch. One R. 56.1 Stmt. ¶¶ 14, 18-19, 21, 24; Katsman Dep. Tr. at 9, 29-30, 36, 43, 113; Rowley Decl. Exs. 52-53 (Dkt. Nos. 914-52-53); Dowd Decl. Ex. J. In 2014 or 2015, SKM created what Channel One calls the "Goodzone service" to sell programming via IPTV. Ch. One R. 56.1 Stmt. ¶ 19; Katsman Dep. Tr. at 9, 36.
At one point SKM "received a television signal" from a company called Lebrai Management LP (Lebrai), which was a United Kingdom limited partnership that no longer exists. Ch. One R. 56.1 Stmt. ¶¶ 36-37, 39, 41, 147; Rowley Decl. Ex. 16 (Dkt. No. 914-16); Katsman Dep. Tr. at 36-38, 62, 94-95, 111. In exchange for payments from SKM and an affiliate, Lebrai provided "a signal with Channel One Programming." Ch. One R. 56.1 Stmt. ¶¶ 40, 147-148; Katsman Dep. Tr. at 36-38, 42-43, 94-95; Rowley Decl. ¶¶ 41-42 & Exs. 37-38 (Dkt. Nos. 91437-38). SKM also received a signal for "at least the TNT Channel." Br. Pl. R. 56.1 Stmt. ¶¶ 22-23; Katsman Dep. Tr. at 134; Kublanovsky Decl. Ex. J (Dkt. No. 925-10) (channel list produced in discovery).
After Lebrai "vanished," SKM obtained its signal "[f]rom Ukraine," Katsman Dep. Tr. at 38, 62, through Oleg (or Oleh) Horbatjuk, who "invoiced SKM for the signal." Ch. One R. 56.1 Stmt. ¶¶ 151-52; Br. Pl. R. 56.1 Stmt. ¶ 24; Katsman Dep. Tr. at 139, 143; Rowley Decl. ¶ 47 & Ex. 43 (Dkt. No. 914-43). SKM paid those invoices, which referenced "rendered computer services." Ch. One R. 56.1 Stmt. ¶¶ 152-53; Katsman Dep. Tr. at 148; Rowley Aff. ¶ 47 & Ex. 43. According to Katsman, SKM's signal supplier "accesses the signal over the air and then transmits it over the Internet" to SKM, in exchange for SKM's payments. Br. Pl. R. 56.1 Stmt. ¶¶ 26-27; Katsman Dep. Tr. at 42-43.
At another point in his deposition, Katsman testified that he did not know how Horbatjuk acquired the signal, and did not remember if Horbatjuk ever said "that he had a license to use the television signals." Br. Pl. R. 56.1 Stmt. ¶ 25; Katsman Dep. Tr. at 156-57.
In order to receive the signal, SKM purchased computers and shipped them to Ukraine, where a Ukrainian company called Cosmonova, LLC (Cosmonova) forwarded the signal to New York in exchange for monthly payments. Ch. One R. 56.1 Stmt. ¶¶ 155-59; Br. Pl. R. 56.1 Stmt. ¶ 28; Katsman Dep. Tr. at 149-50, 153-55, 157-58 (explaining that the signal purchased from Oleg "is transferred to our computer" at Cosmonova and then "it is transferred here," to "the data center" that SKM uses on Long Island), 167-68; Rowley Decl. Exs. 39 (Dkt. No. 914-39), 49 (Dkt. No. 914-49). SKM "then turned the TV signals it received from Ukraine, through Cosmonova," into "a service . . . an opportunity to watch Russian TV." Br. Pl. 56.1 Stmt. ¶ 29; Katsman Dep. Tr. at 96.
Subscribers "pay SKM for the Goodzone service," Ch. One R. 56.1 Stmt. ¶ 20; Katsman Dep. Tr. at 101-102, which includes access to Perviy Kanal (Channel One), TNT (GETV), CHE (Darial), Domashny (New Channel), and Dozhd (Rain). Ch. One R. 56.1 Stmt. ¶¶ 173-75; Br. Pl. R. 56.1 Stmt. ¶¶ 7, 10, 13, 16; 8/18/16 Vidulich Aff. ¶¶ 4-8 & Exs. 2-7; Affidavit of Christopher Vidulich dated May 12, 2017 (Dkt. No. 261) ¶¶ 3, 5, 7 & Ex. 1 (Dkt. No. 261-1); Rowley Decl. Ex. 27 (Dkt. No. 914-27). Monthly subscriptions start at $19.99 plus tax. Ch. One R. 56.1 Stmt. ¶ 179; Katsman Dep. Tr. at 32. As of the date of Katsman's deposition, SKM had "about 1700" customers. Katsman Dep. Tr at 31. Records produced in discovery show that SKM "has sold at least 1,833 subscriptions." Ch. One R. 56.1 Stmt. ¶ 178; Rowley Decl. Ex. 22 (Dkt. No. 914-22). In exchange for subscription payments, SKM's customers receive passwords that permit them to view the Programming, without plaintiffs' authorization, via the Website, televisions connected to set-top boxes, or apps. Ch. One R. 56.1 Stmt. ¶¶ 180-82; FAC ¶ 95; Rowley Decl. Exs. 17 (Dkt. No. 914-17), 23 (Dkt. No. 914-23), 25-27 (Dkt. Nos. 914-25-27), 31-36 (Dkt. Nos. 914-31-36).
Channel One has submitted a paid expert declaration, dated July 13, 2021 and signed by Maksim Kalameyets, an investigator at the International Digital Forensics Center of St. Peterburg Federal Research Center of the Russian Academy of Sciences, who attests that as of that date SKM was still streaming Channel One-Russia (that is, the same programming available locally to Kalameyets in St. Peterburg) with a "42 seconds streaming delay." Kalameyets Decl. (Rowley Decl. Ex. 28 (Dkt. No. 914-28)) ¶ 16. Because expert discovery closed on October 28, 2020 - nine months before Kalameyets signed his declaration - it is untimely and inadmissible on summary judgment. The Court notes, however, that the Website remains available on the internet, where SKM invites consumers (in Russian, roughly translated for the Court by Google translate) to "watch a huge number of TV channels of excellent quality, without a satellite dish and cable," for prices starting at $ 19.99 per month. Gudzon TV, http://gudzon.tv/ (last visited February 25, 2022).
Channel One has not authorized SKM, Katsman, Lebrai, or Horbatjuk to publish, republish, transmit, or stream Channel One's Programming within or without the United States. Ch. One R. 56.1 Stmt. ¶ 142; Shprekher Decl. ¶¶ 45-52. Similarly, none of the Broadcaster Plaintiffs has authorized SKM to broadcast their channels. Br. Pl. R. 56.1 Stmt. ¶¶ 6 (citing the First Amended Complaint, which is not evidence), 9 (same), 12 (same), 15 (same).
Channel One asserts that it has lost revenue, subscribers, prestige, and goodwill, and has suffered "damage to legitimate distribution channels" in the United States as a result of SKM's piracy. Ch. One R. 56.1 Stmt. ¶ 191; Shprekher Decl. ¶¶ 56-58. Channel One has not provided any calculation or estimate of that damage. The Broadcaster Plaintiffs have submitted no evidence concerning their damages, if any.
SKM objects to this paragraph as "argument, not a statement of fact," and claims that it is "contradicted by the fact that [Channel One] makes the programming available, free to air, at no charge across the Russian Federation." SKM-Ch. One R. 56.1 Stmt. ¶¶ 189-91. SKM is mistaken. Channel One's assertion is a statement of fact (albeit a somewhat vague statement), supported by Shprekher Decl. ¶¶ 56-58 ("[p]iracy . . . by SKM and other unlicensed broadcasters has diminished the value of Channel One Programming," causing Channel One to lose revenue "due to viewers using cheaper alternatives" like SKM, and diminishing its "goodwill with its licensees"). SKM's objection is argument.
IV. ANALYSIS
A. Channel One Is Entitled to Summary Judgment as to SKM's Liability under FCA § 605(a)
In order to establish that SKM is liable to it under FCA § 605(a), Channel One must show (1) that it has proprietary rights in the signal for Perviy Kanal; (2) that the signal was originated by satellite; and that SKM thereafter (4) received it and (5) retransmitted it to third parties (6) without authorization and (7) for financial gain. See Russian TV Company, 2021 WL 4341053, at *3; Joint Stock Co. Channel One, 2019 WL 8955234, at *11; Joint Stock Co. Channel One, 2017 WL 696126, at *7-10. There is no material dispute of fact as to any of these elements.
It is undisputed that Channel One produces Perviy Kanal and first broadcasts it, by satellite, in the Russian Federation. Ch. One R. 56.1 Stmt. ¶¶ 3-4, 120; Shprekher Decl. ¶¶ 8-9, 26 & Ex. 2 (Dkt. No. 917-2). The fact that the signal is "free to air" within that nation does not divest Channel One of its "proprietary rights" in the signal, which - by design - it does not make available to the United States ("free to air" or otherwise). See Ch. One R. 56.1 Stmt. ¶ 127; Shprekher Decl. ¶¶ 2833 & Ex. 2 (showing that Perviy Kanal's "satellite footprint" does not reach the United States). Moreover, while Channel One produces a modified version of its programming for U.S. audiences, it makes considerable efforts, both technical and contractual, to limit access to Channel One-US to the customers of its licensed distributors. Shprekher Decl. ¶¶ 34-43 (explaining those efforts and concluding that "the ordinary consumer in the United States cannot access the Channel One-U.S. content without a professional intermediary broadcaster or cable company, which must acquire a license from Channel One"). I therefore reject SKM's suggestion that a television signal which is "free to air" in a foreign nation is for that reason free for the taking - and for unlicensed commercial re-transmission - in the United States.
Even within the Russian Federation, "'free to air' broadcasts may only be lawfully accessed by private viewers - not captured and transmitted for sale by private companies." Chistov Decl. ¶ 48.
It is also undisputed that SKM purchases Channel One's satellite-originated signal - on a no-questions-asked basis from an individual in Ukraine - brings it to a data farm on Long Island, and retransmits it, via IPTV, to its own paying customers in the United States, for commercial gain. Ch. One R. 56.1 Stmt. ¶¶ 19-20, 23, 45, 142, 150-54, 169, 170, 177-79, 181; Katsman Dep. Tr. at 9, 31-33, 36, 39-43, 61-62, 101-02, 139, 156-57; Rowley Decl. Exs. 21 (Dkt. No. 914-21), 22-23, 25-27, 43; Shprekher Decl. ¶¶ 45-52. Indeed, SKM has openly acknowledged the essential elements of plaintiffs' case under § 605(a) for years, interposing - as its only real defense - that the "pirated" signal was "free to air" in Russia. See Joint Stock Co. Channel One, 2018 WL 6712769, at *1 ("SK Management admits that it re-transmits plaintiffs' programming, which it obtains from an individual in the Ukraine, without benefit of any license or other authorization from plaintiffs . . . but asserts that its conduct is not unlawful because . . . plaintiffs broadcast the same programming 'free-to-air' in Russia, such that the associated intellectual property 'is either not proprietary [to plaintiffs] or, if it is, that it has no economic value.'") (internal record citations omitted; alteration in the original). Since that defense fails, and since SKM has made no effort to support any of the 25 affirmative defenses pleaded in its Answer with admissible evidence,summary judgment should be entered against SKM, and in Channel One's favor, under FAC § 605(a).
See Part IV.D of this Report and Recommendation, infra.
B. The Broadcaster Plaintiffs Are Not Entitled to Summary Judgment under FCA § 605(a)
The Broadcaster Plaintiffs, who made a significantly thinner evidentiary showing than Channel One, have failed to carry their burden of production as to one or more of the necessary elements of their § 605(a) claim. GETV does not show that it has any proprietary rights in TNT-Russia (which it accuses SKM of re-transmitting, without authority, for commercial gain), as opposed to TNT-US (which it produces and distributes internationally, but which SKM does not offer to its customers in the U.S.). Moreover, nowhere in the Broadcaster Plaintiffs' Statement of Material Facts do they assert - much less establish through admissible evidence - that any of their allegedly pirated Programming was first (or ever) transmitted by radio - that is, by satellite.
This is an essential element of the Broadcaster Plaintiffs' § 605(a) claim, as to which they will have the burden of proof at trial. See Sykes II, 75 F.3d at 131, 133; Joint Stock Co. Channel One, 2017 WL 696126 at *10. Consequently, at summary judgment, they were required to "[i]ndisputably establish" the necessary facts, Peterson, 2015 WL 2451227, at *8, through citation to "admissible evidence." In re Refco Inc. Secs. Litig., 2013 WL 12191891, at *6. See also Albee Tomato, 155 F.3d at 618 (where the moving party would bear the burden at trial, its "own submissions in support of the motion must entitle it to judgment as a matter of law"). Instead, the Broadcaster Plaintiffs have failed even to address the issue - except in their brief, where they assert, without any relevant record citations, that SKM "'received' and 'intercepted radio communication,' specifically, the Plaintiffs' TV transmissions." Br. Pl. Mem. at 6 (quoting 47 U.S.C. § 605(a)). Since the moving parties have failed to make the required initial showing, "the court must deny the motion," regardless of the strength of the non-moving party's response. 10A Fed. Prac. & Proc. § 2727.1; see also Giannullo, 322 F.3d at 140-41 ("[W]here the movant fail[s] to fulfill its initial burden of providing admissible evidence of the material facts entitling it to summary judgment, summary judgment must be denied[.]") (internal quotations and citation omitted; second alteration in the original).
C. The Broadcaster Plaintiffs Are Not Entitled to Summary Judgment under the Copyright Act
The Broadcaster Plaintiffs contend that SKM has violated the Copyright Act by "retransmitting and therefore publicly performing [the Broadcaster] Plaintiffs' works," thereby infringing their rights under 17 U.S.C. § 106(4). Br. Pl. Mem at 7-8 (citing Aereo, 573 U.S. at 439). They are correct that streaming a copyrighted audiovisual work over IPTV constitutes a "public performance" of the work - one of the "exclusive rights" granted to a copyright holder -such that the "legal or beneficial owner" of the copyright in that audiovisual work "is entitled, subject to the requirements of section 411, to institute an action for . . . infringement[.]" 17 U.S.C. § 501(b). However, since they do not claim to own registered copyrights in any works comprising the Channels or the Programming, they cannot invoke the Copyright Act at all unless they establish (1) that they own unregistered copyrights under foreign law which are protected by the Berne Convention, and (2) that the copyrighted works are not "United States works" as that term is used in § 411(a).
After a careful review of the record, I conclude that they have failed on both counts. First, the Broadcaster Plaintiffs' copyright infringement claim is premised on "neighboring rights" under Russian law, which do not enjoy the benefit of U.S. copyright law protection pursuant to the Berne Convention. Second, having avoided intrusive discovery based on their representation that they were relying "solely" on neighboring rights, the Broadcaster plaintiffs cannot now set aside that theory and claim to hold "valid copyrights" in the "underl[y]ing programming," see Br. Pl. Reply Mem. at 10, as well as the broadcasts as a whole. Third, even if they are not estopped from making that claim, the Broadcaster plaintiffs have failed to substantiate it, either factually or legally. Finally, they have also failed to establish that the works for which they seek copyright protection under the Berne Convention are not "United States works."
1. The Broadcaster Plaintiffs' Infringement Claim is Based on Neighboring Rights, Which Do Not Enjoy Berne Convention Protection
In the First Amended Complaint, the Broadcaster Plaintiffs expressly allege that "[t]he Programming in its totality as a compilation of copyrighted works is protected by Russian 'neighboring rights' . . . irrespective of whether or not a Broadcaster owns the underlying copyrighted works forming the Programming." FAC ¶ 75; see also id. ¶ 76 ("'Neighboring rights' refers to a Broadcaster's right under Russian law to the totality of the content . . . regardless of whether certain copyrightable elements have been licensed from a third party[.]"); id. ¶ 278 ("Russian law protects neighboring rights which, as relevant here, are the rights a broadcaster has in its broadcasts including the rights to re-broadcast its broadcasts.").
Plaintiffs are correct that "neighboring rights," under Russian law, apply to "broadcast or cable programmes" as a whole rather than the individual works that comprise them. Civil Code Art. 1330(1) states that a "broadcasting or cable-services organisation owns an exclusive right to legal[l]y communicate broadcast or cable programmes in accordance with Article 1229 of the present Code . . . including by methods specified in Item 2 of the present article." Art. 1330(2) lists a number of activities deemed to constitute "the communication of a radio or television programme," including, as relevant here, "the re-transmission, i.e. the communication by broadcasting (for instance via a satellite) or by cable of a radio or television programme by one broadcasting or cable-services organisation simultaneously with its receiving such communication of the programme from another such organization." Civil Code Art. 1330(2).4. Art. 1332 states that "[t]he exclusive right to the communication of a radio or television programme is effective on the territory of the Russian Federation if the broadcasting and cable-services organisation is located on the territory of the Russian Federation and carries out the communication by means of transmitters located on the territory of the Russian Federation."
During the fact discovery period, plaintiffs bound themselves even more tightly to their neighboring rights theory, using it both to avoid the obligation to "identify the works allegedly infringed," Joint Stock Co. Channel One, 2017 WL 696126, at *12, and to ward off what would likely have been extensive and expensive discovery concerning their ownership of valid copyrights in those works. See 3/6/18 Dowd Ltr. at 1 (representing that plaintiffs' "copyright claims are based solely on neighboring rights under the Russian Copyright Law") (emphasis added); 4/16/18 Joint Ltr. at 6-7 (asserting that plaintiffs "own 'neighboring rights' in the Programming" and therefore that the discovery into individual copyrights sought by Infomir would be "burdensome, irrelevant and duplicative"); Chistov Decl. ¶ 26 (attesting that "GETV's programming is protected by 'neighboring rights' because of [sic] the totality of the programming is a compilation of copyrighted works").
And they succeeded. On April 25, 2018, I ruled (and on June 12, 2018, the district judge agreed) that "[s]ince plaintiffs do not base any of their claims in this action on their rights (legal or beneficial) to the individual works comprising the Programming, they need not produce agreements, licenses, or other documents concerning the existence or transfer of their rights in such individual works." 4/25/18 Order at 6; see also Joint Stock Co. "Channel One Russia Worldwide", 2018 WL 2932725, at *4.
Nimmer explains that the term "'neighboring rights' is used to refer to the rights of performers, producers of sound recordings, and broadcasters," which are separately codified in the civil codes of Continental-law jurisdictions that recognize such rights (like the Russian Federation) but "less dear to the copyright core than such highly creative exercises as novels and sculptures." 3 Nimmer on Copyright § 8E.01 (2021). Thus, "neighboring rights" do not come within the ambit of the Berne Convention, which generally requires each member state to extend to foreign authors "the same copyright protection" as it "accords to its own nationals." 5 Nimmer on Copyright § 17.05 (2021) (emphasis added); see also Films by Jove, Inc. v. Berov, 341 F.Supp.2d 199, 213 (E.D.N.Y. 2004) (the "principle of national treatment" underlying the Berne Convention means that "a foreign copyright owner is provided in the United States courts the same protection as a citizen owner") (emphasis added); Stephen Fishman, Copyright and the Public Domain § 10.01 (2021) ("The Berne Convention does not cover [neighboring] rights."). Consequently, the Broadcaster Plaintiffs' copyright infringement claim as pleaded - and as litigated in this Court up until summary judgment - fails as a matter of law.
A separate treaty, the International Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations (Rome Oct. 26, 1961) 496 U.N.T.S. 43, entered into force May 18, 1964, was established in 1961 specifically to cover "neighboring rights," but the United States never acceded to that treaty due to its common law heritage. See 3 Nimmer on Copyright § 8E.01.
2. The Broadcaster Plaintiffs Cannot Now Reframe Their Copyright Claim
Perhaps because of the fatal flaw in the theory animating the Broadcaster Plaintiffs' copyright claim as pleaded and litigated, the words "neighboring rights" do not appear in their summary judgment moving papers. Instead, they claim (without citation to any U.S. or Russian legal authority) that because they are "the producers and broadcasters of their respective television channels," they are also the owners of "valid copyrights." Br. Pl. Mem. at 7. In their reply brief, they double down, arguing (again, without citation to any legal authority) that neighboring rights are "not required" because they "do own valid copyrights in their broadcasts as well as in the underlying programming." Br. Pl. Reply Mem. at 10. Given their prior commitment to an inconsistent position, however - and their success in using that position to limit unwelcome discovery - it would be unfair to permit the Broadcaster Plaintiffs to reverse course now, "according to the exigencies of the moment." Intellivision v. Microsoft Corp., 484 Fed.Appx. 616, 619 (2d Cir. 2012) (quoting New Hampshire v. Maine, 532 U.S. 742, 749-50 (2001)).
The doctrine of judicial estoppel "generally prevents a party from prevailing in one phase of a case on an argument and then relying on a contradictory argument to prevail in another phase." New Hampshire, 532 U.S. at 749 (quoting Pegram v. Herdrich, 530 U.S. 211, 227 n.8 (2000)). "[I]n evaluating whether to apply the doctrine of judicial estoppel, courts generally look for the existence of three factors: (1) that a party's new position is 'clearly inconsistent' with its earlier position, (2) that the party seeking to assert this new position previously persuaded a court to accept its earlier position, and (3) that the party 'would derive an unfair advantage or impose an unfair detriment on the opposing party if not estopped.'" Intellivision, 484 Fed.Appx. at 619 (quoting New Hampshire, 532 U.S. at 750-51). All three factors are present here, making the application of judicial estoppel appropriate. Accordingly, this Court can and should deny summary judgment to the Broadcaster Plaintiffs on their copyright claim because it is based "solely" on their neighboring rights under Russian law, 3/6/18 Dowd Ltr. at 1, which do not qualify for national treatment under the Berne Convention.
3. The Broadcaster Plaintiffs Fail to Establish that They Own Valid Russian Copyrights
If the Court is willing to consider the claim that the Broadcaster Plaintiffs advance in their summary judgment papers - that they own "valid copyrights" (in what exactly, they do not say) because they are the "producers" and "broadcasters" of their television channels - that claim must be tested under the law of the jurisdiction that allegedly granted them those copyrights. See Itar-Tass, 153 F.3d at 91-92 (applying Russian law to determine "copyright ownership," including "the nature of the interest that is owned"); Sadhu Singh Hamdad Tr. v. Ajit Newspaper Advert., Mktg. & Commc'ns, Inc., 503 F.Supp.2d 577, 584-85 (E.D.N.Y. 2007) (applying Indian law "to determine if plaintiff properly owned a copyright for the Ajit logo and masthead in India").
"Determination of a foreign country's law is an issue of law." Itar-Tass, 153 F.3d at 92. In determining foreign law, however, courts "may consider any relevant material or source," Fed.R.Civ.P. 44.1, including expert testimony, which, although not required in every case, "remains the 'basic mode of proving foreign law.'" Jonas v. Est. of Leven, 116 F.Supp.3d 314, 330 (S.D.N.Y. 2015) (quoting Bigio v. Coca-Cola Co., 2010 WL 3377503, at *4 (S.D.N.Y. Aug. 23, 2010)); see also Itar-Tass, 153 F.3d at 87-89, 92 (describing the four expert witnesses called by the parties to interpret a point of Russian copyright law and concluding that defendants' experts were "far more persuasive"); DoubleLine Cap. LP v. Odebrecht Fin., Ltd., 2021 WL 4596561, at *10 (S.D.N.Y. Oct. 6, 2021) (rejecting interpretation of Brazilian law championed by parties who offered "nothing but their own (American) lawyers' argument" on the issue). Here, the Broadcaster Plaintiffs do not even offer that much. Although it is their burden to "demonstrate ownership of a valid copyright," Sadhu Singh Hamdad Tr., 503 F.Supp.2d at 584-85, their summary judgment papers do not contain a single citation to Russian copyright law (codified in chapter 70 of the Civil Code). Nor, for that matter, do they explain, even in lay terms, by what mechanism they became copyright owners, or in what works those rights inhere. Compare Br. Pl. R. 56.1 Stmt. ¶¶ 8, 11, 14 (asserting that the Broadcaster Plaintiffs "own the copyrights of" CHE, Domashny, and Dozhd) with Br. Pl. Reply Mem. at 10 (asserting that they own "valid copyrights" in their "broadcasts" as well as in the "underlying programming").
It is well-settled, in this Circuit, that "conclusory, ipse dixit assertions are not sufficient to defeat summary judgment." Mauro v. Costco Wholesale Corp., 2013 WL 3816731, at *3 (E.D.N.Y. July 22, 2013). Here, it is the plaintiffs - the parties with the burden of proof at trial - who are improperly relying on ipse dixit in lieu of the admissible evidence and cogent legal analysis required to obtain summary judgment on a copyright claim. Even if they are not deemed estopped, therefore, they have failed to show, through their "own submissions in support of the motion," that they are the legal or beneficial owners of any valid Russian copyrights in the Channels, the Programming, or their constituent works. Albee Tomato, 155 F.3d at 618.
4. The Broadcaster Plaintiffs Fail to Establish that Any Non-U.S. Works Were Infringed
Since any relevant copyrights that the Broadcaster Plaintiffs may hold are unregistered, they must establish that the copyrighted works are not United States works. 17 U.S.C. § 411(a). In the context of a summary judgment motion, this means demonstrating that the record is "so onesided" that no reasonable juror could conclude that those works were (i) first published in the United States, or (ii) "simultaneously within and outside the United States." Setplex, 284 F.Supp.3d at 555; Anderson, 477 U.S. at 248; 10A Fed. Prac. & Proc. § 2727.1.
In their moving brief, the Broadcaster Plaintiffs baldly assert, without analysis or support, that registration is not required because "these are foreign works." Br. Pl. Mem. at 7. In their reply brief, they argue that there was no simultaneous publication in Russia and the United States because the modified Channels intended for the U.S. market were broadcast "hours after the broadcasts are made in Russia" and in any event are "different." Br. Pl. Reply Mem. at 12.
I am not persuaded that the Broadcaster Plaintiffs have met their burden on this issue. First, not every Broadcaster Plaintiff prepared a modified version of its Programming for the U.S. market, and at least one - Rain - apparently did not time-shift either. See Sindeeva Dep. Tr. at 9899 ("Q. I understand that Rain broadcasts all programming by satellite, IPTV and Web, but do all three broadcasts occur at the same time? . . . A. Well, likely - well, of course.").
Second, and more significantly, the Broadcaster Plaintiffs appear to assume that the Programming is first "published," for purposes of 17 U.S.C. §§ 101 and 411(a), at the same time it is first "broadcast," whether by satellite in Russia, or by cable, IPTV, OTT, app, or other means in the United States. But § 101 defines "publication" as the "distribution of copies" of the work to the public by sale, other transfer of ownership, rental, lease, or lending. The statute expressly cautions that a "public performance" of a work," such as a broadcast, "does not of itself constitute publication." Id.; see also Fraifer, 2020 WL 1515938, at *11 ("[B]roadcasts and transmissions are distinct from publication[.]"); 1 Nimmer on Copyright § 4.11 (2021) ("[P]erformance is not a publication[.]").
This can be a significant issue with regard to movies, television programs, and other audiovisual works. See, e,g., Setplex, 284 F.Supp.3d at 556 (dismissing direct infringement claim on ground that plaintiff's allegation that programming was "first aired" outside of the United States "is insufficient to allege where the works were first published because the mere public performance or display of a work does not constitute publication"); Fraifer, 2020 WL 1515938, at *10 (accepting DISH Network's argument that foreign network television programming was "first published" when the networks "insert[ed] these works into channel feeds in their home countries . . . for the purpose of further distribution and public performance around the world").
In this case, the record contains virtually no information about how the Programming is prepared and distributed prior to (or after) its initial broadcast. Thus, even assuming, arguendo, that the modified Programming that some of the Broadcaster Plaintiffs produced for the U.S. market were sufficiently distinct from the domestic Russian original as to constitute a different work - for purposes of the Berne Convention exception to the registration requirement - I could not determine, on the present record, where or when the "pirated" Programming was "first published." For this reason as well, the Broadcaster Plaintiffs have not demonstrated that they are entitled to summary judgment on their Copyright Act claim.
D. Affirmative Defenses
As noted above, only a handful of the defenses pleaded in SKM's Answer are genuinely "affirmative" defenses, "on which the defendant bears the burden of proof at trial." Giammettei, 34 F.3d at 54. Even fewer are relevant to plaintiffs' current claims, and none of those has merit. For the most part, they are inadequately pleaded. Even if facially adequate, however, they cannot survive plaintiffs' pending motions, because SKM has failed to come forward with even a shred of evidence to show that there is a genuine dispute as to the material facts on which they are based.Consequently, they should all be dismissed.
For example, the Twenty-First Affirmative Defense avers that plaintiffs' claims are barred by "the applicable statutes of limitations." SKM Ans. at 40. The statute of limitations under both the FCA and the Copyright Act is three years. Joint Stock Co. Channel One, 2019 WL 8955234, at *12 (collecting cases); 17 U.S.C. § 507(b). This action was filed on February 19, 2016 - less than three years after Katsman first registered the Website on June 12, 2014. Ch. One R. 56.1 Stmt. ¶¶ 28-29; Katsman Dep. Tr. at 76, 105; Declaration of Raymond J. Dowd dated May 17, 2017 (Dkt. No. 260) Ex. 1 (Dkt. No. 260-1). Consequently, plaintiffs' claims cannot be time-barred.
E. Injunctive Relief and Damages
Channel One seeks a permanent injunction directing SKM (or its domain registrant) to take down the Website, see Ch. One Mem. at 13-14, and an award of statutory damages of at least $1,833,000 (and up to $18,330,000) for 1,833 violations of the FCA, plus prejudgment interest, costs, and fees. Id. at 10-13.
1. Injunctive Relief
The FCA, 47 U.S.C. § 605(e)(3)(B)(i), vests the Court with considerable discretion to "grant temporary and final injunctions on such terms as it may deem reasonable to prevent or restrain violations of subsection (a)," and Channel One has demonstrated that an injunction would be appropriate here. SKM has brazenly pirated plaintiffs' Programming for years, for commercial gain, including during the lengthy pendency of this action. During that same period, injunctive relief and hefty damages under the same statute were issued against one of SKM's original codefendants, see Joint Stock Co. "Channel One Russia Worldwide", 2020 WL 1467098, at *2 (awarding statutory damages of $1,000 per subscriber and enhanced damages of $2,000 per subscriber, aggregating over $12 million, against IPTV provider Panorama and Panorama's principal Yevdayev), but even that did not dissuade SKM.
In eBay, Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006), the Supreme Court established a four-factor test to determine whether a plaintiff is entitled to a permanent injunction. The plaintiff must show: "(1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction." Salinger v. Colting, 607 F.3d 68, 77 (2d Cir. 2010) (quoting eBay, 547 U.S. at 391).
Here, the test is met - which even SKM seems to acknowledge, as it raises no objection to equitable relief in its opposition papers. First, SKM's Website and the Goodzone service have inflicted irreparable harm on Channel One and will continue to do so for as long as SKM operates with impunity in violation of § 605(a). Ch. One R. 56.1 Stmt. ¶ 189; FAC ¶ 106. Second, money damages will not suffice to compensate Channel One for its losses, which are difficult to calculate (comprising lost revenue, lost customers, and lost goodwill), continuing to mount, and unlikely to be paid, as SKM is heavily in debt and Katsman has filed for bankruptcy protection. Ch. One R. 56.1 Stmt. ¶¶ 93-94, 99, 191; Shprekher Decl. ¶¶ 56-58; Katsman Dep. Tr. at 53-54; Rowley Decl. Ex. 20 (Dkt. No. 914-20); see also In re Sam Katsman, No. 1:21-cv-40081 (E.D.N.Y.). Third, the balance of hardships between the parties is straightforward: "[t]he only hardship to [SKM] from this injunction would be to prevent [it] from engaging in further illegal activity, so the balance clearly weighs in Plaintiffs' favor." DISH Network, LLC v. Henderson, 2020 WL 2543045, at *8 (N.D.N.Y. May 19, 2020) (quoting DISH Network L.L.C. v. DelVecchio, 831 F.Supp.2d 595, 602 (W.D.N.Y. 2011)). Fourth, "the public interest is not disserved by an injunction as it will . . . help enforce federal law." Id.
The only remaining question is the scope of the injunction. Channel One wants the Website disabled. But Perviy Kanal is only one of many - perhaps hundreds - of channels offered by SKM. Channel One's co-plaintiffs in this action, who have now been litigating against SKM for more than five years and have made three unsuccessful summary judgment motions (two of them against SKM), have yet to establish SKM's liability as to them. I therefore recommend, respectfully, that a permanent injunction be issued, but that - as this Court has done in the past, at Channel One's request - the injunction be narrowly tailored to protect the successful plaintiff's interests rather than broadly aimed at shutting down the business entirely.
See, e.g., Default Judgment and Permanent Injunction (Panorama) dated July 10, 2017 (Dkt. No. 313).
2. Damages
In addition to injunctive relief, Channel One seeks statutory damages pursuant to 47 U.S.C. § 605(e)(3)(C)(i)(II), which permits a court to award not less than $1,000 and not more than $10,000 "for each violation" of § 605(a). Within that range, "[t]he amount of [statutory] damages assessed pursuant to section 605 rests within the sound discretion of the court." Time Warner Cable of New York City v. Taco Rapido Rest., 988 F.Supp. 107, 111 (E.D.N.Y. 1997). In cases involving IPTV piracy, each of the defendant's subscribers may be counted as a separate violation. Joint Stock Co. Channel One, 2019 WL 8955234, at *15. SKM has (or had) 1,833 subscribers. Ch. One R. 56.1 Stmt. ¶ 178; Rowley Decl. Ex. 22; Katsman Dep. Tr. at 31. I therefore recommend that $1,000 per violation be assessed, for a total of $1,833,000 in statutory damages. "I recognize that $1,000 is the low end of the range set out in § 605(e)(3)(C)(i)(II). However, there is no evidence that [SKM's] subscribers commercialized their unlawful access or otherwise used it for anything other than personal viewing." Joint Stock Co. Channel One, 2019 WL 8955234, at *15. Moreover, Channel One has made no showing as to its actual losses, and, as noted above, is only one of many Russian broadcasters who claim that their Channels were unlawfully retransmitted by SKM. An award of $1,833,000 is therefore just.
Because SKM's misconduct was willful - persisting for years even after this litigation was commenced - and committed for financial gain, Channel One is also entitled to enhanced damages pursuant to 47 U.S.C. § 605(e)(3)(C)(ii). Although there is no evidence before the Court regarding SKM's profits from its unlawful activity (if Katsman can be believed, the business has lost money), "[g]eneral deterrence . . . requires that the Court respond to the commercial-scale unlawful conduct at issue in this case with a sum significant enough to send a signal to others who are engaged - or contemplating engagement - in similar businesses." Joint Stock Co. Channel One, 2019 WL 8955234, at *16. Moreover, SKM should not be rewarded for the length of time it has managed to forestall an adverse judgment. I therefore recommend an enhanced damages award of an additional $1,000 per subscriber, which will double the total award.
Since the damages figure takes into account the passage of time since this action was filed, prejudgment interest would not be appropriate. Channel One is, however, entitled to an award of its reasonable attorneys' fees and costs pursuant to 47 U.S.C. § 605(e)(3)(B)(iii). It should therefore be directed to file a fee application within 30 days of the decision on the pending motions.
V. CONCLUSION
For the reasons set forth above I recommend, respectfully, that Channel One's motion for summary judgment (Dkt. No. 913) be GRANTED, as further detailed below, and that the Broadcaster Plaintiffs' motion for summary judgment (Dkt. No. 924) be DENIED as to their claims under the FCA and the Copyright Act but GRANTED as to defendant SKM's affirmative defenses, which should be DISMISSED.
I further recommend that judgment be ENTERED in favor of Channel One and against SKM in the amount of $3,666,000.00.
I further recommend that defendant SKM, together with its parents, subsidiaries, affiliates, predecessors, successors, principals (including but not limited to Samuel Katsman), officers, directors, shareholders, employees, attorneys, members, agents, and assigns, as well as any persons or entities in active concert or participation with them, be PERMANENTLY ENJOINED AND RESTRAINED from broadcasting, re-broadcasting, transmitting, distributing, offering, selling, advertising, publishing, or performing Perviy Kanal, or any other channels or programming produced by Channel One, via any medium, including, but not limited to, IPTV, the gudzon.tv website, or any other website, absent the advance written consent of Channel One.
I further recommend that Channel One be directed to file its application for an award of its reasonable attorneys' fees and costs no later than 30 days after this Court's decision on the pending motions.
NOTICE OF PROCEDURE FOR FILING OF OBJECTIONS TO THIS REPORT AND RECOMMENDATION
The parties shall have fourteen days to file written objections to this Report and Recommendation pursuant to 28 U.S.C. § 636(b)(1) and Fed.R.Civ.P. 72(b). See also Fed.R.Civ.P. 6(a) and (d). Any such objections shall be filed with the Clerk of the Court and addressed to the Hon. George B. Daniels, United States District Judge. Any request for an extension of time to file objections must be directed to Judge Daniels. Failure to file timely objections will result in a waiver of such objections and will preclude appellate review. See Thomas v. Arn, 474 U.S. 140 (1985); Frydman v. Experian Info. Sols., Inc., 743 Fed.Appx. 486, 487 (2d Cir. 2018) (summary order); Wagner & Wagner, LLP v. Atkinson, Haskins, Nellis, Brittingham, Gladd & Carwile, P.C., 596 F.3d 84, 92 (2d Cir. 2010).