Distribution of unauthorized and infringing copies

Federal District Court Opinions

YASH RAJ FILMS (USA), INC. v. BOBBY MUSIC CO., (E.D.N.Y. 9-29-2006) YASH RAJ FILMS (USA), INC., Plaintiff, v. BOBBY MUSIC CO. & SPORTING GOODS, INC., “NASEEM AKHTAR”, INDIVIDUALLY AND DOING BUSINESS AS BOBBY MUSIC CO., HIGH-TECH VIDEO, INC., “CHOHAN”, INDIVIDUALLY AND DOING BUSINESS AS MUSIC MAHAL, “GITA SHAH”, INDIVIDUALLY AND DOING BUSINESS AS HIGH-TECH VIDEO INC., “SATNAM SINGH”, INDIVIDUALLY AND DOING BUSINESS AS HIGH-TECH VIDEO, VIJAY VIDEO, INC., “VIJENDRA SINGH”, INDIVIDUALLY AND DOING BUSINESS AS VIJAY VIDEO, MEDIA DIMENSIONS, INC., “BHARAT MEHTA”, INDIVIDUALLY AND DOING BUSINESS AS MEDIA DIMENSIONS JOHN DOES 1-20, Defendants. No. 01-CV-8378 (JFB) (CLP). United States District Court, E.D. New York. September 29, 2006

The attorney for plaintiff is Megha Bhouraskar, Esq. of
Pope & Bhouraskar, LLP, New York, New York.

The attorneys for defendants Naseem Akhtar and Bobby Music
are Khrishnan Shanker Chittur, Esq. and Andrey Strutinskiy,
Esq., of Chittur & Associates, P.C., New York, New York.

MEMORANDUM AND ORDER

JOSEPH BIANCO, District Judge

Plaintiff Yash Raj Films (USA), Inc. (“Yash Raj”) brought
this action, alleging that defendants had distributed
unauthorized and infringing copies of motion pictures to
which plaintiff owns the copyrights or exclusive rights
under the copyrights, in violation of 17 U.S.C.
§§ 106 and 501. Yash Raj moves for summary
judgment, pursuant to Fed.R.Civ.P. 56, as against
defendants Naseem Akhtar and Bobby Music Co. and Sporting
Goods, Inc. (“Bobby Music”), regarding liability for
copyright infringement, and requests an Page 2 inquest to
determine damages.[fn1] Defendant Akhtar cross-moves for
summary judgment. For the reasons stated below, plaintiff’s
motion is granted, and defendant Akhtar’s motion is denied.
Accordingly, the Court enters a permanent injunction
against defendants Bobby Music and Akhtar, as detailed at
the conclusion of this Memorandum and Order, and also
grants plaintiff’s request for an inquest regarding
damages, contingent on an application setting forth
additional damages that plaintiff is entitled, beyond those
already awarded by this Court.

I. FACTUAL BACKGROUND

The following facts are undisputed, unless otherwise
indicated. Yash Raj is an Indian film producing company,
which holds copyrights to numerous motion pictures. (Compl.
§ 5.) Relevant to this action, they claim that they
own the copyrights and other exclusive rights to eleven
Indian motion pictures: “Chandni,” “Deewane,” “Dil to Pagal
Hai,” “Dilwale Dulhania Le Jayenge,” “Dulhan Hum Le
Jayenge,” “Kabhi Kabhie,” “Kuch Kuch Hota Hai,”
“Mohabbatein,” “Rufugee,” “Silsila,” and “Zubeidaa.” (See
Declaration of Jawahar Sharma (“Sharma Decl.”) § 5,
Ex. A.) Yash Raj has obtained Certificates of Copyright
Registration (“Copyright Certificates”) for ten of these
eleven films from the United States Copyright Office. (See
Sharma Decl., Ex. B.) With respect to the eleventh film,
“Dulhan Hum Le Jayenge,” Yash Raj has exclusive
distribution rights in the United States, by contract.[fn2]
(See id.) Among the rights retained by Yash Raj includes
those which authorize them to distribute the films
throughout the Untied States and Canada, in theaters, and
in digital versatile disc (“DVD”) format, as well as in VHS
video cassette format.

Defendant Bobby Music was a retail business, which
distributed films in VHS and DVD format, solely owned by
defendant Akhtar, who is the sole shareholder of the
business. (See Pl.’s Rule 56.1 Statement of Undisputed
Facts (“Pl.’s 56.1 Stmt.”) § 5.)

Yash Raj hired investigators, which between October 28,
2001 and December 12, 2001, entered and obtained
counterfeit and unauthorized copies of their films from
Bobby Music Co., High-Tech Video, and Vijay Video.[fn3]
(See Sharma Decl., Ex. E.) As a result of this
investigation, Yash Raj obtained an Order of Seizure from
the Honorable David G. Trager on December 17, 2001, which
authorized plaintiff, with the assistance of the United
States Marshals, to seize unauthorized DVDs and VHS copies
from Bobby Music Co. (See Pre. Inj. at 2-3).[fn4] On
December 19, 2001, in the course of executing the Seizure
Order, approximately sixty-four video Page 3 cassettes
and twenty-nine DVDs containing unauthorized copies of
plaintiff’s films were seized from Bobby Music Co. (See id.;
see also Pl.’s 56.1 Stmt. § 12.) In addition to
authorizing the seizure, the Order of Seizure required that
defendant Akhtar appear in court and show cause as to why
an injunction should not enter. (See Pre. Inj. at 1.)
Defendant Akhtar failed to appear, and the Court thereafter
entered an Order of Preliminary Injunction, dated January
7, 2002, enjoining him from:

reproducing, displaying, copying, compiling, and
distributing unauthorized copies of motion pictures in
which Plaintiff holds the copyrights and exclusive rights
under copyright or otherwise infringing Plaintiff’s
copyrights in any manner whatsoever, and in any form, and
from assisting, conspiring or authorizing any third person
or party to reproduce, display, copy, compile and
distribute unauthorized copies of motion pictures in which
Plaintiff holds the copyrights or exclusive rights under
the copyright, or otherwise infringe Plaintiff’s
copyrights in any manner whatsoever and in any form . . .

(Pre. Inj. at 6.)

On November 16, 2002, while the case was pending, the New
York City Police Department (“NYPD”) conducted a raid at
Bobby Music Co. Jawahar Sharma, Yash Raj’s Head of
Operations for North America, was present during the raid
and seizure, and he identified unauthorized and counterfeit
copies of Yash Raj films at the store. The films identified
by Sharma were seized by the police. As a result of the
NYPD seizure, plaintiff successfully moved for contempt
against defendant Akhtar for violating the preliminary
injunction, which is described infra in detail.

II. PROCEDURAL BACKGROUND

On April 21, 2006, Yash Raj filed a motion for summary
judgment pursuant to Fed.R.Civ.P. 56 as against all
defendants. Defendant Akhtar filed a cross-motion for
summary judgment. During the pendency of this motion,
plaintiff’s motion for contempt as against Akhtar for
violation of the Court’s preliminary injunction was
pending, and was referred to the Honorable Cheryl L.
Pollak, United States Magistrate Judge, for a Report and
Recommendation. By Report and Recommendation dated July 5,
2006, Judge Pollak recommended that Akhtar be found to have
wilfully infringed plaintiff’s copyrights, in violation of
the preliminary injunction. Accordingly, Judge Pollak
recommended that plaintiff’s motion be granted, and that
plaintiff should be awarded $330,000 in statutory damages,
and should be awarded reasonable attorney’s fees and costs,
should plaintiff submit appropriate supporting records.
Defendant Akhtar objected to the Report and Recommendation
on July 17, 2006. By Order issued September 27, 2006, the
Court found defendant Akhtar’s objections to be without
merit, and adopted the Report and Recommendation in full.

On March 24, 2006, after a briefing schedule had been
established for the instant motion to dismiss, but prior to
the filing of plaintiff’s moving papers, counsel for
Akhtar, Bobby Music Co. & Sporting Goods, Inc. (“Bobby
Music”), High-Tech Video, Inc., Chohan, Gita Shah, Satnam
Singh, Vijay Video, Inc., Vijendra Sheth, and Vijay Video
made an application to withdraw as counsel for all
defendants other than Akhtar and Bobby Music Co. & Sporting
Goods, Inc. Page 4 The basis for the withdrawal was
counsel’s assertion that he had been unable to reach or
communicate with these defendants, and remained unpaid. On
April 28, 2006, at the hearing held by Judge Pollak
regarding the contempt motion, Judge Pollak granted the
motion to withdraw as to some of the defendants, and
reserved as to others.

Subsequently, on September 5, 2006, this Court held oral
argument regarding the instant motion for summary judgment,
in addition to considering defendant Akhtar’s objections to
Judge Pollak’s Report and Recommendation addressing the
civil contempt motion. At oral argument, it became apparent
to the Court that all of the defendants for which counsel
sought withdrawal did not have notice of plaintiff’s motion
for summary judgment, as counsel had been unable to
communicate with them, which led to his withdrawal motion.
Moreover, the Court noted the fact that plaintiff sought
summary judgment against defendants Bharat Mehta and Media
Dimensions, who had defaulted in answering the complaint,
after their motion to dismiss for lack of personal
jurisdiction was denied by Judge Trager by Memorandum and
Order dated August 27, 2002. In fact, the only defendant
who received notice and submitted a response, opposing the
motion for summary judgment, was Akhtar. In light of these
circumstances, plaintiff agreed to withdraw their summary
judgment motion as to all defendants other than Akhtar and
Bobby Music, and indicated that to the extent that they
still seek relief as to those parties, they will re-submit
their application for relief as to those defendants as a
motion for default judgment, after all the representation
issues are resolved. Accordingly, the Court proceeds to
consider plaintiff’s motion for summary judgment only as
against Akhtar and Bobby Music.

III. STANDARD OF REVIEW

Pursuant to Rule 56(c) of the Federal Rules of Civil
Procedure, a court may not grant a motion for summary
judgment unless “the pleadings, depositions, answers to
interrogatories, and admissions on file, together with
affidavits, if any, show that there is no genuine issue of
material fact and that the moving party is entitled to
judgment as a matter of law.” FED. R. CIV. P. 56(c);
Globecon Group, LLC v. Hartford Fire Ins. Co., 434 F.3d
165, 170 (2d Cir. 2006). The moving party bears the burden
of showing that he or she is entitled to summary judgment.
See Huminski v. Corsones, 396 F.3d 53, 69 (2d Cir. 2005).
The court “is not to weigh the evidence but is instead
required to view the evidence in the light most favorable
to the party opposing summary judgment, to draw all
reasonable inferences in favor of that party, and to eschew
credibility assessments.” Amnesty Am. v. Town of W.
Hartford, 361 F.3d 113, 122 (2d Cir. 2004); Anderson v.
Liberty Lobby, Inc., 477 U.S. 242, 248 (1986) (stating that
summary judgment is unwarranted if “the evidence is such
that a reasonable jury could return a verdict for the
nonmoving party”). Once the moving party has met its burden,
the opposing party “must do more than simply show that
there is some metaphysical doubt as to the material facts.
. . . [T]he nonmoving party must come forward with specific
facts showing that there is a genuine issue for trial.”
Caldarola v. Calabrese, 298 F.3d 156, 160 (2d Cir. 2002)
(quoting Matsushita Elec. Indus. Co. v. Zenith Radio Corp.,
475 U.S. 574, 586-87 (1986)). Page 5

IV. DISCUSSION

In order to establish a claim of copyright infringement, a
plaintiff must demonstrate: (1) ownership of a valid
copyright in the work allegedly infringed; and (2)
defendant infringed the plaintiff’s copyright by violating
one of the exclusive rights bestowed to copyright holders
under 17 U.S.C. § 106. See Island Software and
Computer Service, Inc. v. Microsoft Corp., 413 F.3d 257,
260 (2d Cir. 2005). “Among the exclusive rights that the
Copyright Act bestows upon copyright owners is the right
`to distribute copies . . . of the copyrighted work to the
public by sale or other transfer of ownership.'” Id.
(quoting 17 U.S.C. § 106(3)). In the instant case,
Akhtar does not contest the fact that plaintiff owns valid
copyrights in the goods in question. (See Def.’s 56.1 Stmt.
§ 2.) Further, he does not contest the fact that
infringing goods were seized from Bobby Music, a store
which he admits that he is the sole owner of, during the
November 16, 2002 NYPD raid.[fn5] (See id. §§
5, 15.) Thus, the only remaining question that remains for
this Court to determine is whether Akhtar may be held
liable for the uncontested copyright infringement which
occurred at Bobby Music.

Akhtar argues that he cannot be held vicariously liable
for copyright infringement based on the seizure of the
items at the store because he had no personal involvement
in the store. Specifically, he asserts that he is only the
owner of the store, and that the day-to-day operations of
the store, including the procurement and sale of products,
are coordinated entirely by an independent contractor.
However, Judge Pollak’s Report and Recommendation, which
was adopted in toto by this Court, found that Akhtar was in
contempt of this Court’s preliminary injunction order
because Bobby Music continued to offer for sale infringing
items, and that he could be held vicariously liable for
such infringement. See Report and Recommendation
(hereinafter “R&R”) at 13-14, 19-20. Akhtar briefed the
identical argument in opposition to plaintiff’s motion for
contempt, which was specifically rejected by Judge Pollak.
See R&R at 17-20. Specifically, Judge Pollak found that, as
the sole owner of Bobby Music, Akhtar had both a direct
financial interest in the store’s activities, and had the
right and ability to supervise the contractor’s activities,
such that Akhtar could be held vicariously liable. See id.
at 18-20 (citing Shapiro, Bernstein & CO. v. H.L. Green
Co., 316 F.2d 304, 307 (2d Cir. 1963) (“When the right and
ability to supervise coalesce with an obvious and direct
financial interest in the exploitation of copyrighted
materials even in the absence of actual knowledge
that the copyright monopoly is being impaired . . . the
purposes of copyright law may be best effectuated by the
imposition of liability upon the beneficiary of the
exploitation.”); Capitol Records, Inc. v. Wings Digital
Corp., 218 F. Supp. 2d 280, 285 (E.D.N.Y. 2002) (finding
that defendant could be held liable for vicarious liability
where complaint alleged that he “was the sole shareholder
who managed and financially benefitted from the production
and sale of the acts of copyright infringements”); Peer
Int’l Corp. v. Luna Records, Inc., 887 F. Supp. 560, 565
(S.D.N.Y. 1995) (“Individuals who have the right and ability
to supervise infringing copyright and a direct financial
interest in such activities are not shielded from liability
even though they have no actual Page 6 knowledge of the
infringement.”)). Additionally, Judge Pollak highlighted
that defendant Akhtar had previously been held sufficiently
interested in the business and capable of supervising
employees such that he could be held liable for copyright
liability in Arclightz & Films Pvt. Ltd. v. Vijay, No.
01-CV-7643 (CBA) (SMG). (See Supplemental Report and
Recommendation of the Honorable Steven M. Gold, dated June
24, 2005, adopted by the Honorable Carol B. Amon by Order
dated August 23, 2005, at 4, 7-8.) See id. at 19-20. Over
Akhtar’s objection, the Court found that Judge Pollak’s
analysis was sound and well-reasoned, and accordingly
adopted the finding that Akhtar could be held vicariously
liable for infringements that were discovered at Bobby
Music. The Court maintains the position that its prior
ruling was correct, and thus adheres to it, as the law of
the case. Richards v. City of New York, 433 F. Supp. 2d
404, 416 (S.D.N.Y. 2006) (“The law of the case doctrine
requires a court to `adhere to [its] own decision at an
earlier stage of the litigation unless there are cogent or
compelling reasons not to, such as an intervening change of
controlling law, the availability of new evidence, or the
need to correct a clear error or prevent manifest
injustice.'”) (quoting New York State Nat’l Org. for Women
v. Terry, 961 F.2d 390, 395-96 (2d Cir. 1992)).

Second, Akhtar argues that plaintiff’s summary judgment
motion should be denied because he claims that there is
insufficient admissible evidence on the record to support a
finding that copyright infringement has occurred. See FED.
R. CIV. P. 56(e); see also Raskin v. Wyatt Co., 125 F.3d
55, 66 (2d Cir. 1997) (noting that a district court may
only consider admissible evidence in ruling on a motion for
summary judgment). Specifically, Akhtar points to the fact
that the affidavits of plaintiff’s investigators, submitted
at the inception of the instant action, which supported the
Order of Seizure, are inadmissible because they were signed
under false names. The Court finds this argument to lack
merit because assuming arguendo that the investigator
affidavits are inadmissible, there exists sufficient
alternative competent evidence of infringement on the
record to support plaintiff’s motion for summary judgment,
including the evidence that infringing items were seized
from the shelves of Bobby Music during the November 16,
2002 raid by the NYPD. In fact, as mentioned supra, Akhtar
has conceded that counterfeit items were seized during that
NYPD raid. (See Def.’s 56.1 Stmt. § 15.)

IV. CONCLUSION

In sum, it is undisputed in this case that plaintiff owned
valid copyrights in the goods at issue and that Bobby Music
violated plaintiff’s exclusive right to distribute the
work. Further, it is settled in this case that defendant
Akhtar was vicariously liable for copyright infringements
which occurred at Bobby Music because he had both a direct
financial interest in the sale of the copyrighted
materials, and a right and ability to supervise the
employee responsible for the sales such that he is
vicariously liable for infringements occasioned there.[fn6]
Accordingly, plaintiff’s motion for summary judgment as
against defendants Akhtar and Bobby Music is GRANTED. Page
7

Next, the Court moves to consider plaintiff’s application
for an inquest to determine damages. The Court notes that
in connection with plaintiff’s previously granted motion
for contempt, plaintiff was awarded statutory damages for
Akhtar’s violation of plaintiff’s copyrights, and was
awarded attorney’s fees, conditional on plaintiff’s
submission of appropriate supporting documentation.
Necessarily, plaintiff is only entitled to damages not
previously awarded by the Court. To the extent that
plaintiff seeks such additional relief, the Court directs
plaintiff to submit such application, which is hereby
respectfully REFERRED to United States Magistrate Judge
Cheryl L. Pollak, pursuant to 28 U.S.C. § 636(b)(3)
for an inquest on additional damages, if any, that
plaintiff may be entitled to.

Finally, since plaintiff has established both copyright
liability and a threat of continuing infringement by
defendants, as exhibited by the fact that Akhtar was in
contempt of this Court’s preliminary injunction order
enjoining such infringement, the Court finds that a
permanent injunction is warranted. See Island Software &
Computer Serv., Inc. v. Microsoft Corp., No. 01-CV-750
(WDW), 2006 WL 1025915, at *2 (E.D.N.Y. Apr. 13, 2006)
(“[W]hen a copyright plaintiff has established liability and
a threat of continuing infringement, he is entitled to an
injunction”); accord Blue Ribbon Pet Products, Inc. v. Rolf
C. Hagen (USA) Corp., 66 F. Supp. 2d 454, 464 (E.D.N.Y.
1999); see also Richard Feiner & Co. v. Turner
Entertainment Co., No. 96-CV-1472 (RO), 1998 WL 78180, at
*2 n. 2 (S.D.N.Y. Feb. 24, 1998) (noting that it is an
abuse of discretion for a court to deny a permanent
injunction where copyright liability has been established
and a threat of continuing infringement exists).
Accordingly, the Court permanently enjoins defendants Akhtar
and Bobby Music from reproducing, displaying, copying,
compiling, and distributing unauthorized copies of motion
pictures in which plaintiff holds the copyrights and
exclusive rights under copyright or otherwise infringing
plaintiff’s copyrights in any manner whatsoever, and in any
form, and from assisting, conspiring or authorizing any
third person or party to reproduce, display, copy, compile
and distribute unauthorized copies of motion pictures in
which plaintiff holds the copyrights or exclusive rights
under the copyright, or otherwise infringe plaintiff’s
copyrights in any manner whatsoever and in any form. See 17
U.S.C. § 502(a).

SO ORDERED.

[fn1] Although plaintiff initially filed the instant motion
for summary judgment as against all defendants, the motion
was withdrawn as to all defendants other than Akhtar and
Bobby Music, as described in detail infra.

[fn2] By terms of their contract with Baba Entertainments
Ltd., Yash Raj retains exclusive rights to the film within
all territories other than India, Nepal, Bhutan, Bangladesh
and Pakistan. (See Sharma Decl., Ex. B.)

[fn3] Defendant Akhtar summarily denies that this occurred
at Bobby Music Co. (See Response of Defendant Naseem Akhtar
to Plaintiff’s Statement of Undisputed Facts (“Def.’s 56.1
Stmt.”, § 11.)

[fn4] Citations to “Pre. Inj.” refer to the Order of
Preliminary Injunction issued by Judge Trager on January 7,
2002.

[fn5] Akhtar and Bobby Music are represented by the same
counsel, and counsel did not file an opposition to the
summary judgment motion on behalf of Bobby Music. The Court
notes that Bobby Music is no longer a going concern.

[fn6] Defendant Akhtar’s cross motion for summary judgment
asserts the identical argument, that he is entitled to
judgment as a matter of law because he cannot be held
vicariously liable for the copyright infringement which
occurred at Bobby Music. As the Court finds this argument
to be without merit, his cross motion for summary judgment
is denied. Page 1