MEMORANDUM
BARTLE, District Judge.
The plaintiff, Hung Jung Tang d/b/a as Hyun Jin's Video ("Tang"), has instituted suit against nine defendant retail video store owners
Korean Broadcasting System ("KBS"), of Seoul, Korea, produces Korean language television shows for television broadcast in Korea. Munwha Broadcasting Company ("MBC") also produces shows for television broadcast in Korea. KBS and MBC have assigned to Korean Television Enterprises, Ltd. ("KTE"), a California corporation and wholly owned subsidiary of KBS, all rights to distribute Korean video programs in the United States.
Seoul Broadcasting System ("SBS") is also a production company and television network that produces television shows in the Republic of Korea. SBS entered into an agreement with SBS USA, Inc., a 100% owned subsidiary of SBS. By virtue of this agreement, Sae Young Yooh, President of SBS in Korea, gave Sang Yul Chun, the President of SBS USA, a power of attorney, among other things, to make any and all necessary decisions as to SBS USA, including distributing its videos in the United States. Power of Attorney dated November 1, 1991. Among Sang Yul Chun's powers is the power to submit copyright applications. In turn, Sang Yul Chun entered into a contract with Ja Hak Koo, the President of Seoul Video Production, which gave Ja Hak Koo the exclusive right to copy and sell the tapes of the SBS television programs in much of the United States. This agreement also provides both that SBS USA should register the Copyrights of the programs and provide Ja Hak Koo with the copies of the registrations and that Ja Hak Koo has the power to enforce the copyrights.
Ja Hak Koo, through Seoul Video Production, entered into an exclusive distributorship agreement with Tang. Seoul Video granted Tang "the exclusive rights to reproduction of video tapes ... and sell only in the territories of Pennsylvania, Southern New Jersey ... and three Korean stores in the State of Delaware." Distributor's Agreement, Exhibit 28, Section 3 (February 24, 1992).
Each week, KBS, MBC, and SBS, through their licensees, distribute in the United States videotapes of television shows recently broadcast in Korea.
Tang alleges, and defendants conceded at the recent court hearing, that they, without authorization from plaintiff, have copied, rented or sold and continue to copy, rent or sell, videotapes of KBS, MBC and SBS television shows in the territory in which plaintiff has an exclusive right. Tang maintains that this activity infringes his exclusive rights in the copyrights of the KBS, MBC and SBS tapes.
Prior to May 1, 1992, the defendants purchased from Tang the video tapes of Korean television shows produced by KBS, MBC, and SBS.
In order to prevail with a copyright infringement claim, plaintiff must establish two essential elements: (1) an exclusive ownership right in a valid, existing copyright,
The Copyright Act, 17 U.S.C. § 501(b), provides
The owner of a copyright has exclusive rights, with limited exceptions not relevant here, to do and to authorize, among other things, the following:
17 U.S.C. § 106.
The exclusive rights found in 17 U.S.C. § 106 are separate and distinct and severable from one another; any of these rights can be transferred and owned separately. 17 U.S.C. § 201(d).
Holding an exclusive right, however, is not by itself sufficient to bring an action under the Copyright Act. Under 17 U.S.C. § 411(a), "no action for infringement of the copyright in any work shall be instituted until registration of the copyright claim has been made in accordance with this title."
Tang must demonstrate that he has an ownership interest in the valid copyright and either that copyright registrations have been issued or, at least, that applications for copyright registrations on the Korean video tapes, together with the required copies and filing fees, have been submitted to the Copyright Office prior to the institution of the infringement action.
Where the plaintiff is not the author of the copyrighted work he or she must establish a proprietary right through the chain of title in order to support a valid claim to the copyright. Motta v. Samuel Weiser, Inc., 768 F.2d 481, 484 (1st Cir.), cert. denied 474 U.S. 1033, 106 S.Ct. 596, 88 L.Ed.2d 575 (1985) (cites omitted).
In addition, there was evidence that Tang had submitted applications on many of the tapes to the Copyright Office and received registrations from the Copyright Office for those tapes. Tang as the holder of exclusive rights to reproduce and distribute the videotapes is entitled to submit applications for and obtain registrations of the copyrights. 17 U.S.C. § 408(a); Wales Indus. Inc. v. Hasbro Bradley, Inc., 612 F.Supp. 510, 515 (S.D.N.Y.1985).
Defendants argue that the settlement between the defendants and plaintiff Dae Han before the preliminary injunction hearing closes off any recourse that Tang may have against the defendants. This settlement does not change the agreement Tang has with Dae Han, and thus Tang still may enforce his exclusive rights. Tang's right to enforce the exclusive sublicense is based on the United States copyright law and is not prohibited under the agreement with Dae Han.
Tang must also establish an interest in a valid copyright as to the SBS tapes in order to maintain his claims based on infringement of the copyrights in those tapes. The documents and testimony relating to the agreements between the Presidents of SBS and of SBS USA, between Sang Yul Chun and Seoul Video Production, and between Seoul Video and Tang establish a proprietary right through a chain of title. Defendants contest the nature and extent of the agreement that existed between SBS and SBS USA, but according to the testimony SBS USA President Sang Yul Chun, SBS granted Sang Yul Chun the power, among other things, to secure copyrights on the SBS video productions from Korea. This power, according to Chun, is derived from the contract between SBS and SBS USA, written only in Korean, and the Power of Attorney granted to Sang Yul Chun by SBS.
Seoul Video granted Tang "the exclusive rights" to reproduce and distribute, and this Court finds that these rights are enforceable under the Copyright Act against alleged infringers.
Tang has also met the registration requirement. There is evidence of applications made by both SBS USA and Tang for registrations.
Defendants argue that Tang acted outside of his authority under his agreement with Seoul Video by filing copyright applications for the SBS tapes.
Defendants contend that Tang is barred from claiming infringement as to the SBS copyrights under the equitable
Here, Tang's refusal to sell the SBS tapes was a response to defendants' copy, rental and sale of tapes acquired from the Maryland dealer. Defendants contend that Tang's action harmed them in that they had to obtain SBS tapes from elsewhere and were thus forced into violating Tang's exclusive distributorship in the SBS tapes. There is, however, no statutory requirement that Tang, as the holder of an exclusive ownership interest in a copyright, has to rent, sell or distribute the works in which he has an interest. While defendants may have been harmed by the inability to purchase the SBS tapes from Tang, they should not now blame Tang for their subsequent decision to infringe on his exclusive rights in those tapes.
Tang seeks preliminary injunctive relief and impounding pursuant to 17 U.S.C. §§ 502(a) and 503(a). When ruling on a motion for preliminary injunctive relief, the district court must consider four factors: (1) the likelihood that the applicant will prevail on the merits at the final hearing; (2) the extent to which the plaintiffs are being irreparably harmed by the conduct complained of; (3) the extent to which the defendants will suffer irreparable harm if the preliminary injunction is issued; and (4) the public interest. S & R Corporation v. Jiffy Lube International, Inc., 968 F.2d 371 at 374 (3d Cir.1992) (citing Hoxworth v. Blinder, Robinson & Co., 903 F.2d 186, 197-83 (3d Cir.1990)). All four factors should favor preliminary relief before the injunction will issue. Id. The same "likelihood of success" standard adopted in preliminary injunction cases is applicable to requests for impounding. WPOW, Inc. v. MRLJ Enterprises, 584 F.Supp. 132 (D.D.C.1984).
As to the likelihood of success on the merits with regards to the KBS and MBC tapes, the videotapes obtained from the defendants as well as the stipulation of counsel at hearing establish that the defendants did copy the videotapes. Along with establishing that defendants have copied the copyrighted works without Tang's permission, Tang has also established his exclusive interests in the valid copyrights on the SBS, KBS and MBC video tapes. A prima facie case of copyright infringement is demonstrated where the plaintiff has shown (1) an exclusive ownership right in a valid, existing copyright and (2) copying or other use of the copyrighted material by the defendant without the plaintiff's approval. See, e.g., Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240 (3d Cir.1983), cert. dismissed, 464 U.S. 1033, 104 S.Ct. 690, 79 L.Ed.2d 158 (1984); Georgia Television v. TV News Clips of Atlanta, 718 F.Supp. 939, 946 (N.D.Ga. 1989). By establishing the elements of a prima facie case, Tang has demonstrated a likelihood of success on the merits.
Once the copyright holder has made out a prima facie case of infringement, irreparable injury is presumed. Apple Computer, Inc., 714 F.2d at 1254.
The balance of hardships factor also weighs in favor of the issuance of a preliminary injunction as to the KBS, MBC and SBS tapes. The testimony evidences that Tang is losing a large portion of its business. In addition, Tang also bears the expense
With regards to the public interest in the preliminary injunction, "it is virtually axiomatic that the public interest can only be served by upholding copyright protection and, correspondingly, preventing misappropriation of the skills, creative energies, and resources which are invested in the protected work." Apple Computer, Inc., 714 F.2d at 1255 (citing Klitzmer Industries, Inc. v. H.K. James & Co., 535 F.Supp. 1249, 1259-60 (E.D.Pa.1982)).
Tang, as the moving party for the preliminary injunction, has met its burden of showing (1) its reasonable probability of eventual success on the merits; (2) that irreparable injury will occur if injunctive relief is not granted; and (3) the harm to the moving party outweighs the potential harm to the nonmoving party and the general public.
The Court will grant Tang's motion for a preliminary injunction and for impoundment.
PRELIMINARY INJUNCTION AND ORDER
AND NOW, this 13th day of July, 1992, for the reasons set forth in the foregoing Memorandum, it is ORDERED that:
1. The Motion of Plaintiff Hung Tang, d/b/a Hyun Jin's Video (hereinafter Hung Tang) for a Preliminary Injunction is GRANTED.
(a) Defendants, Ho Yong Hwang d/b/a Ko Ba Woo Video; Jung Hun Nam d/b/a Han A Rum Video; Jang Hee Lee d/b/a Korean Video Rental; Kyung Park d/b/a Ga Go Pa Food Market; Myong Ja Kim d/b/a Dan Kol Oriental Market; Jung Hi Lee d/b/a Lotte Oriental; Man Su Ha d/b/a Treon's Cut Rate; Won Chang Choi d/b/a Asian Food Market; and Soon Hwa Kang d/b/a Koa Video; and their officers, agents, servants, employees, and attorneys, and those persons in active concert or participation with them are hereby preliminarily enjoined, until a final hearing, from infringing the copyrights of Korean Broadcasting System ("KBS"), Munwha Broadcasting Company ("MBC"), and Seoul Broadcasting System ("SBS") for which plaintiff Hung Tang has exclusive distribution rights in Pennsylvania, South Jersey, and Delaware.
2. Plaintiff Hung Tang is entitled to an impoundment, pursuant to 17 U.S.C. § 503(a), and the motion for impoundment will be granted upon the submission by plaintiff Hung Tang to the Court of a proper Form of Order and Writ of Seizure providing with specificity as to each defendant what videocassettes and other articles are to be seized and impounded, and the date and time such seizure is to take place, after consultation with the United States Marshall.
3. The Motion of Plaintiff Hung Tang for attorney fees and costs incurred in connection with the Motion for Preliminary Injunction is DENIED.
FootNotes
limits Tang's ability to make copyright applications or enforce the copyright. However, this provision merely provides a restriction on Tang's ability to make contracts with and representations to third parties. See Major League Baseball Promotion Corp. v. Colour—Tex, Inc., 729 F.Supp. 1035 (D.N.J.1990).
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