IP Law Daily, COPYRIGHT—DNev: Magician Not Entitled to Anti-Suit Against Dutch Entertainer Who Offered to Sell Magician’s Copyrighted Illusion, (Oct 12, 2012)

By Mark Engstrom, J.D.

Teller—the silent half of the comedic-magic duo Penn & Teller—was not entitled to an anti-suit injunction against Dutch entertainer Gerard Dogge, who created and offered to sell, via You Tube, the secrets to an illusion that was substantially similar to Teller’s “Shadows” illusion, which Teller copyrighted in 1983, the federal district court in Las Vegas has ruled (Teller v. Dogge, October 9, 2012, Mahan, J.).

According to Teller’s complaint, the “Shadows” illusion consisted of a spotlight that was trained on a bud vase containing a red rose. The light was aimed so that the shadow of the real rose was projected onto a white screen. Teller would enter the scene with a large knife and dramatically sever individual leaves and petals from the shadow of the rose, whereupon the leaves and petals of the real rose in the bud vase would fall to the floor.

Teller brought copyright and Lanham Act unfair competition claims against Dogge, an elusive defendant who evaded personal service, but responded to Teller’s complaint by filing his own suit, predicated on defamation, in a Belgian court. Teller filed an emergency motion for service by publication, which was promptly granted. Service by publication was effected using the e-mail address that was associated with Dogge’s YouTube account.

Multi-Factor Test for Anti-Suit Injunction

The Ninth Circuit uses a three-factor test to decide whether an anti-suit injunction should be issued. The three factors evaluated: (1) whether or not the parties and the issues were the same in both the domestic and foreign actions and whether or not the initial action was dispositive of the action to be enjoined; (2) whether the foreign litigation would frustrate a policy of the domestic forum that would issue the injunction or whether any other “Unterweser” consideration applied; and (3) whether the impact on comity was tolerable.

(1) Parties and Issues

In both lawsuits, the parties were clearly the same: Teller and Dogge. The issues, however, were not. Teller’s success or failure in the domestic case would not automatically trigger or guarantee a certain outcome in Dogge’s Belgian case. Teller’s suit, which involved copyright and unfair competition claims under U.S. law, would not be dispositive of Dogge’s suit, which involved defamation claims under Belgian law.

(2) Policies of the Forum; Applicability of Other Considerations

Forum policies. The Ninth Circuit has reasoned that foreign litigation would substantially frustrate forum policies, and thus would warrant an anti-suit injunction, when parties explicitly contracted in a forum selection clause. In this case, no business agreement existed between Teller and Dogge, so they could not have contracted to litigate in a particular forum in the event of a dispute. Therefore, the crucial forum policy of upholding forum selection clauses was inapplicable to this case. The most important policy of the forum in this case was providing a forum for plaintiff to litigate his novel claims of whether a person could copyright a magic trick or illusion.

Other considerations. The additional Unterweser considerations included whether the foreign litigation would: (1) be vexatious or oppressive, (2) threaten the issuing court’s in rem or quasi in rem jurisdiction, or (3) prejudice other equitable considerations. To the extent that the foreign suit may have been vexatious, it did not overcome the fact that the second and third Unterweser considerations did not warrant the issuance of an anti-suit injunction. More specifically, Dogge’s foreign litigation did not threaten the domestic court’s in rem or quasi in rem jurisdiction and no other equitable consideration was prejudiced.

(3) Comity

Because Teller failed to meet the first two factors of the anti-suit test, the third factor—the impact on comity—was an irrelevant consideration.

The case number is 2:12-CV-591 JCM (GWF).

Mark G. Tratos (Greenberg Traurig LLP) for Teller. Gerard Dogge, pro se.

Cases: Copyright NevadaNews