16‐1616 Baiul v. NBC Sports

UNITED STATES COURT OF APPEALS FOR THE SECOND CIRCUIT

SUMMARY ORDER

RULINGS BY SUMMARY ORDER DO NOT HAVE PRECEDENTIAL EFFECT. CITATION TO A SUMMARY ORDER FILED ON OR AFTER JANUARY 1, 2007, IS PERMITTED AND IS GOVERNED BY FEDERAL RULE OF APPELLATE PROCEDURE 32.1 AND THIS COURTʹS LOCAL RULE 32.1.1. WHEN CITING A SUMMARY ORDER IN A DOCUMENT FILED WITH THIS COURT, A PARTY MUST CITE EITHER THE FEDERAL APPENDIX OR AN ELECTRONIC DATABASE (WITH THE NOTATION ʺSUMMARY ORDERʺ). A PARTY CITING A SUMMARY ORDER MUST SERVE A COPY OF IT ON ANY PARTY NOT REPRESENTED BY COUNSEL.

At a stated term of the United States Court of Appeals for the Second Circuit, held at the Thurgood Marshall United States Courthouse, 40 Foley Square, in the City of New York, on the 7th day of September, two thousand seventeen.

PRESENT: RALPH K. WINTER, DENNY CHIN, SUSAN L. CARNEY, Circuit Judges. ‐ ‐ ‐ ‐ ‐ ‐ ‐ ‐ ‐ ‐ ‐ ‐ ‐ ‐ ‐ ‐ ‐ ‐ ‐ ‐ ‐ ‐ ‐ ‐ ‐ ‐ ‐ ‐ ‐ ‐ ‐ ‐ ‐ ‐ ‐ ‐ ‐ ‐ ‐ ‐ ‐ ‐ ‐ ‐ ‐ ‐x

OKSANA BAIUL, OKSANA LTD., Plaintiffs‐Appellants,

v. 16‐1616‐cv

NBC SPORTS, a division of NBCUniversal Media LLC, a Delaware limited liability company, Defendant‐Appellee,

BARRY MENDELSON, an individual, DOES 1‐10, ON ICE INC., a California corporation, Defendants.*

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* The Clerk of Court is respectfully directed to amend the official caption to conform to the above.

FOR PLAINTIFFS‐APPELLANTS: RAYMOND J. MARKOVICH, West Hollywood, California.

FOR DEFENDANT‐APPELLEE: ANDREW D. JACOBS (Chelley E. Talbert, on the brief), NBCUniversal Media, LLC, New York, New York.

Appeal from the United States District Court for the Southern District of

New York (Forrest, J.).

UPON DUE CONSIDERATION, IT IS HEREBY ORDERED,

ADJUDGED, AND DECREED that the orders of the district court are AFFIRMED.

Plaintiffs‐appellants Oksana Baiul and her company, Oksana, Ltd.

(collectively, ʺBaiulʺ), appeal decisions and orders of the district court entered April 19,

2016, and May 19, 2016. Baiul appeals the April 19, 2016 opinion and order denying her

motion to voluntarily dismiss her action without prejudice pursuant to Federal Rule of

Civil Procedure 41(a)(2), and granting the motion of defendant‐appellee NBC Sports, a

division of NBCUniversal Media, LLC (ʺNBCʺ), for judgment on the pleadings,

dismissing the action with prejudice pursuant to Federal Rule of Civil Procedure 12(c),

and for sanctions pursuant to

. Baiul also appeals the May 19, 2016

decision and order setting sanctions in the amount of $50,000. We assume the partiesʹ

familiarity with the underlying facts, procedural history, and issues on appeal.

Baiul is a former competitive figure skater who won a world

championship in 1993 and an Olympic gold medal in 1994. On December 22, 2013,

Baiul filed this suit in New York State Supreme Court, New York County, for alleged

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breach of a contract entered into in 1995. After the case was removed to the district

court, and after more than two years of litigation, including discovery, the district court

granted NBCʹs motion for judgment on the pleadings dismissing the action with

prejudice and for sanctions against Baiulʹs counsel, Raymond J. Markovich. Baiul

timely appealed.

This appeal presents four issues: (1) whether the Copyright Act preempts

Baiulʹs claims such that dismissal was proper; (2) whether the district court erred in

denying Baiulʹs attempts to dismiss her case without prejudice; (3) whether the district

court abused its discretion in denying leave to amend her fourth amended complaint;

and (4) whether the district court abused its discretion in imposing sanctions on

Markovich. Each issue will be discussed in turn.

I. Motion for Judgment on the Pleadings

We review de novo the grant of a motion for judgment on the pleadings

pursuant to Federal Rule of Civil Procedure 12(c). See Biro v. Conde Nast,

(2d Cir. 2015), cert. denied,

(2016). The district court granted NBCʹs

February 26, 2016 motion for judgment on the pleadings and dismissed the action with

prejudice, finding, inter alia, that Baiulʹs claims are preempted by the Copyright Act.

We agree.

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The Copyright Act preempts a state law claim when

(1) the particular work to which the claim is being applied falls within the type of works protected by the Copyright Act under

and 103, and (2) the claim seeks to vindicate legal or equitable rights that are equivalent to one of the bundle of exclusive rights already protected by copyright law under

.

Briarpatch Ltd. v. Phoenix Pictures, Inc.,

(2d Cir. 2004). A state law claim

regarding a work of the type protected by the Copyright Act may proceed only if the

claim contains ʺextra elements that make it qualitatively different from a copyright

infringement claim.ʺ

We conclude that the Copyright Act preempts the claims asserted by Baiul

in her fourth amended complaint: claims under New York law for unjust enrichment,

conversion, and accounting. Here, the work forming the basis of Baiulʹs claims ‐‐ a

video of Nutcracker On Ice ‐‐ fits within the Copyright Actʹs category of ʺmotion pictures

and other audiovisual works,ʺ

(a)(6), even if it contains material, such as

Baiulʹs performance, that may not be copyrightable. See Natʹl Basketball Assʹn v.

Motorola, Inc.,

, 849 (2d Cir. 1997) (ʺOnce a performance is reduced to

tangible form, there is no distinction between the performance and the recording of the

performance for the purposes of preemption . . . .ʺ (alteration omitted) (quoting Balt.

Orioles, Inc. v. Major League Baseball Players Assʹn,

, 675 (7th Cir. 1986))).

Further, the state law claims seek to vindicate rights that are already

protected by the Copyright Act. See Briarpatch, 373 F.3d at 306‐07 (citing 1 Melville B.

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Nimmer & David Nimmer, Nimmer on Copyright § 1.01[B][1][g] (2003) for the

proposition that ʺa state law cause of action for unjust enrichment . . . should be

regarded as an ʹequivalent rightʹ and hence, pre‐empted insofar as it applies to

copyright subject matterʺ); Gary Friedrich Enters., LLC v. Marvel Enters., Inc.,

, 230‐31 (S.D.N.Y. 2010) (finding conversion claim preempted by the Copyright

Act); Weber v. Geffen Records, Inc.,

(S.D.N.Y. 1999) (finding

accounting claim preempted because ʺ[i]t [was] only through th[e] basic [copyright]

claim . . . that anyone profiting must account to plaintiffʺ). Accordingly, Baiulʹs state

law claims ‐‐ the only claims asserted in the fourth amended complaint ‐‐ are

preempted by the Copyright Act and, therefore, the district court properly dismissed

the action.

II. Motions to Voluntarily Dismiss

On December 28, 2015 and April 19, 2016, the district court denied Baiulʹs

attempts to voluntarily dismiss her case without prejudice.

A. Rule 41(a)(1)

Federal Rule of Civil Procedure 41(a)(1)(A)(i) provides that a plaintiff

ʺmay dismiss an action without a court order by filing . . . a notice of dismissal before

the opposing party serves either an answer or a motion for summary judgment.ʺ We

review de novo the denial of a motion to dismiss pursuant to Rule 41(a)(1)(A)(i). ISC

Holding AG v. Nobel Biocare Fin. AG,

(2d Cir. 2012).

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Baiul lost her right to unilaterally dismiss the action without a court order

on October 16, 2014, when NBC filed an answer. Baiul argues that her right to dismiss

the action without a court order was revived when NBC removed the case on December

21, 2015, and when she amended her complaint. We disagree. First, Baiulʹs attempted

notice of voluntary dismissal was administratively rejected as defective by the Clerk of

Court. Second, the removal of the action did not create a new lawsuit or new cause of

action. See Pritchett v. Office Depot, Inc.,

(10th Cir. 2005) (ʺWhen a

matter is removed to federal court, it is not traditionally viewed as recommenced, nor

as a new cause of action.ʺ). Third, no new right of dismissal is created by the filing of an

amended complaint, even one with substantially new allegations. See Universidad Cent.

Del Caribe, Inc. v. Liaison Comm. on Med. Educ.,

(1st Cir. 1985) (ʺ[A]

plaintiff cannot supersede the cutting off of its right to give notice of voluntary

dismissal by filing an amended complaint after an answer . . . has been filed by the

defendant.ʺ (citing Armstrong v. Frostie Co.,

(4th Cir. 1971))).

Baiulʹs reliance on Sheldon v. Amperex Electronic Corp,

(2d Cir.

1971) (per curiam), is misplaced. In that case, we held that a defendantʹs ʺseveranceʺ

from a multi‐defendant suit created a separate action that the plaintiff was permitted to

voluntarily dismiss under Rule 41(a)(1).

. The defendants in Amperex,

however, had attempted to avail themselves of an answer that was filed by a co‐

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defendant prior to severance. Here, NBC itself had already filed an answer and was not

relying on an answer filed by another party that had been dismissed from the action.

Accordingly, the district court did not err in denying Baiulʹs motion to

voluntarily dismiss the action pursuant to Rule 41(a)(1).

B. Rule 41(a)(2)

Federal Rule of Civil Procedure 41(a)(2) provides that, absent agreement

between the parties, ʺan action may be dismissed at the plaintiffʹs request only by court

order.ʺ See Kwan v. Schlein,

(2d Cir. 2011). We review orders denying

voluntary dismissal pursuant to Rule 41(a)(2) for abuse of discretion.

In determining whether to grant a motion to dismiss pursuant to Rule

41(a)(2), a court considers (1) the plaintiffʹs diligence in bringing the motion, (2) any

undue vexatiousness on the plaintiffʹs part, (3) the extent to which the suit has

progressed, (4) the duplicative expense of relitigation, and (5) the adequacy of the

plaintiffʹs explanation for the need to dismiss. Zagano v. Fordham Univ.,

(2d Cir. 1990). In addition, dismissal without prejudice is improper ʺif the defendant

would suffer some plain legal prejudice other than the mere prospect of a second

lawsuit.ʺ Kwan,

(quoting Camilli v. Grimes,

(2d Cir.

2006)).

The district court did not abuse its discretion in denying Baiulʹs motion to

voluntarily dismiss by court order. The motion came two years after the action was

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filed, and, after Baiul had amended the complaint multiple times. Baiul maintained a

breach of written contract claim for over a year after she conceded in a parallel action in

California that there was no written agreement. Baiul declined to dismiss her action

voluntarily with prejudice after the district court indicated it was inclined to impose

sanctions, even though NBC offered to stipulate, in writing, that it would not move to

dismiss the California action on res judicata grounds in return. Further, NBC would

suffer plain legal prejudice if Baiul were allowed to voluntarily dismiss the action

without prejudice. Baiul is pursuing an action in California based on what her counsel

admits are ʺthe same set of operative factsʺ as those here. Granting the motion would

give Baiul the opportunity to bring the claims again in New York and would multiply

the already duplicative expenses incurred by NBC.

Accordingly, the district court did not abuse its discretion in denying

Baiulʹs motion to voluntarily dismiss her action by a court order pursuant to Rule

41(a)(2).

III. Denial of Leave to Amend

We review the denial of leave to amend for abuse of discretion. See In re

Am. Exp. Co. Shareholder Litig.,

(2d Cir. 1994). Leave to amend should be

ʺfreely give[n] . . . when justice so requires,ʺ Fed. R. Civ. P. 15(a)(2), and in the absence

of ʺdilatory motive,ʺ ʺbad faith,ʺ or ʺundue prejudiceʺ to the opposing party, Kroshnyi v.

U.S. Pack Courier Servs., Inc.,

(2d Cir. 2014).

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As an initial matter, Baiul did not request leave to amend. See Gallop v.

Cheney,

(2d Cir. 2011) (ʺWhile leave to amend under the Federal Rules

of Civil Procedure is freely granted, no court can be said to have erred in failing to grant

a request that was not made. As a result, the contention that the District Court abused

its discretion in not permitting an amendment that was never requested is frivolous.ʺ

(internal quotation marks and citations omitted)). And, in any event, the district court

did not abuse its discretion in denying leave to amend. As the district court found,

Baiul faced ʺnumerous insurmountable barriersʺ in stating a cognizable cause of action,

and Baiul had a history of vexatious litigation. Appʹx 658; see Burch v. Pioneer Credit

Recovery, Inc.,

(2d Cir. 2008) (per curiam) (ʺ[M]otions to amend should

generally be denied in instances of . . . bad faith or dilatory motive.ʺ).

IV. Imposition of Sanctions

Under

, a district court may impose sanctions on an

attorney who ʺmultiplies the proceedings in any case unreasonably and vexatiously.ʺ

ʺWe have held that an award under § 1927 is proper when the attorneyʹs actions are so

completely without merit as to require the conclusion that they must have been

undertaken for some improper purpose such as delay.ʺ In re 60 E. 80th St. Equities, Inc.,

(2d Cir. 2000) (quoting United States v. Intʹl Bhd. of Teamsters,

(2d Cir. 1991)). Sanctions may be imposed only ʺwhen there is a finding of

conduct constituting or akin to bad faith.ʺ

(quoting Sakon v. Andreo,

, 114

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(2d Cir. 1997)). We review a district courtʹs decision to impose sanctions for abuse of

discretion. Wolters Kluwer Fin. Servs., Inc. v. Scivantage,

(2d Cir. 2009).

The district court did not abuse its discretion in sanctioning Markovich

and requiring him to pay NBCʹs costs and reasonable attorneysʹ fees. The court

remarked, ʺIf ever this Court has witnessed attorney conduct more vexatious and

harassing or deserving of § 1927 sanctions, the Court has difficulty in recalling that

occasion.ʺ Appʹx 660. The court determined that Markovich was aware of the meritless

nature of the claims, yet continued to pursue litigation in New York anyway.

Moreover, Markovich advanced claims based on a written agreement for over a year

after learning that no written agreement existed.

Markovich argues that sanctions should not be imposed because he tried

repeatedly to dismiss the case without prejudice. Markovichʹs attempts to dismiss the

action were insufficient to overcome his vexatious conduct. Moreover, Markovichʹs

refusal to dismiss the action with prejudice subject to Baiulʹs right to proceed solely in

California unduly multiplied the proceedings and caused unnecessary expense.

Accordingly, the district court did not abuse its discretion in imposing

§ 1927 sanctions.

. . .

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We have considered Baiulʹs remaining arguments and find them to be

without merit. Accordingly, we AFFIRM the orders of the district court. FOR THE COURT: Catherine OʹHagan Wolfe, Clerk

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