937 F. Supp. 2d 835
E.D. La.2013Background
- SS LLC sues Noire Blanc and Anchor Bay over filming of Sinners and Saints across the U.S., including Louisiana and California.
- SS LLC asserts copyright infringement, unfair competition under the Lanham Act, unfair trade practices, conversion, and accounting.
- SS LLC claims ownership of rights in the results and proceeds of its employees’ work; alleges SS LLC’s rights were transferred without authorization.
- SS LLC filed a copyright application on June 7, 2012, after suit was filed; the registration status is disputed.
- Defendants move to dismiss under Rule 12(b)(1), 12(b)(3), or 12(b)(6) arguing arbitration under PSA governs disputes.
- Court denies 12(b)(3) and 12(b)(6) motions without prejudice, ordering discovery on whether SS LLC and Noire Blanc formed an arbitration agreement.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Arbitration scope and existence of agreement | SS LLC not party to PSA; Clark lacked authority | PSA valid; SS LLC bound to arbitration | Threshold question unresolved; denial of 12(b)(3) and 12(b)(6) pending discovery |
| Arbitration vs. forum/enforceability procedure | MSA not binding; contract formation defects | Arbitration clause enforceable; gateway to arbitration | Arbitration issues require factual resolution; kept for discovery |
| Registration prerequisite for copyright claim | Registration after filing suffices; protection attaches | Registration not satisfied; improper registration | Row remains pending; not dismissed on registration grounds yet |
| Preemption of state-law claims by the Copyright Act | LUTPA not preempted due to extra element test | Preempted by §301(a) | Preemption issue unresolved; discovery on scope of arbitration to continue |
Key Cases Cited
- Will-Drill Res., Inc. v. Samson Res. Co., 352 F.3d 211 (5th Cir. 2003) (two-step arbitration existence and scope test; contract formation matters for courts)
- Prima Paint Corp. v. Flood & Conklin Mfg. Co., 388 U.S. 395 (U.S. 1967) (attacks on contract validity vs. arbitration clause; governs severability)
- Primerica Life Ins. Co. v. Brown, 304 F.3d 469 (5th Cir. 2002) (arbitration clause attacks governed by Will-Drill framework)
- Richlin v. Metro-Goldwyn-Mayer Pictures, Inc., 531 F.3d 962 (9th Cir. 2008) (registration completeness vs. sufficiency for Copyright Act)