Diagnostic Unit Inmate Council v. Films Inc.
88 F.3d 651
8th Cir.
1996
Check Treatment

*2 BOWMAN, GIBSON, Before JOHN R. LOKEN, Judges. Circuit LOKEN, Judge. Circuit Department The Arkansas of Corrections (“ADC”) shows movies to inmates in the common areas of its an attorney representing picture motion ADC, owners warning wrote that it infringe would copyrights owner to use video- tapes licensed for only home use at these public performances. ADC has since con- appellees (“Films”) tracted with Films Inc. Pictures, and Swank (“Swank”), Motion Inc. to provide videotaped movies that come with “public performance rights.” distribution Certain Arkansas inmates commenced this against class action Films and seeking Swank declaratory judgment under Copyright in-prison Act that showings of “home use only” rented movies do infringe the own- copyrights, ers’ either because prison show- ings “public are not performances” within the meaning of 17 106(4), §§ U.S.C. 101 and because such showings are “fair use” within meaning 17 U.S.C. 107. The in- mates believe that ADC could obtain more desirable selection of movies at less cost renting from local video stores. For exam- ple, the 1994 contract between ADC and provided Swank that Swank supply 121 videotapes total annual cost of $9,600, whereas the stipulated that ADC could comparable rent number of only” “home use videotapes for an annual $2,200. cost about The district initially court1 dismissed the complaint for legally state a eogni- 1. The HONORABLE GARNETT THOMAS EI- em District of Arkansas. SELE, United Judge States District for the East- copy subject to defendant’s terial with directions claim, we remanded zable parties in places that] right a manner joined. [in whether to consider position.” Texas West adverse legally v. Motion Council Inmate Unit Diagnostic (5th Cir.1989), Co., America, Pub. Ass’n Picture 869,107 *3 denied, remand, Cir.1992). U.S. ADC was cert. 493 (8th On 379 (1990); Wembley, also Inc. see 953 under Fed. plaintiff L.Ed.2d involuntary joined as an 87, Cravats, Inc., 315 F.2d However, ADC de- 19(a). Superba when R.Civ.P. lawsuit, Cir.1963) (“where no manufac the is actual the in there position a to take clined intention sale, ground ture, and no immediate on the or use again dismissed court invention, there controversy. The the ability to practice no actual and there is controversy”). ad- for ADC has justiciable [patent] appeal. Counsel no inmates join with not “did that ADC court this vised judgment declaratory as The inmates judg- the appealing in Inmate the Council True, satisfy standard. this plaintiffs cannot therefore, is, and court of the district ment stake an financial indirect the have inmates with Agreeing case.” in this appellant not an pays for movie ADC issue in the par- to that ADC’s district court gener Fund Inmate from an Welfare controversy, rentals actual is no there ticipate means sales to by profits from commissaries ated we affirm. However, employees. prison and inmates Judgment Act Declaratory 1. The gen spent “for must be that Fund while to declare courts federal authorizes inmates,” Ann. Ark.Code of eral benefit ease of a parties “[i]n rights of interested authority 12-29-107, over has total ADC § 2201. The controversy.” U.S.C. actual and, importantly, more expenditures all Fund controversy” is an of “actual requirement renting over the complete control ADC of Constitution. by III imposed Article pris at its videotaped movies showing of and 458, 452, Thompson, See Steffel movies, may certain request Inmates ons. 94 S.Ct. videotapes for rent movie they cannot is “a sub controversy actual In general, not, and The inmates do showings. prison having controversy, between stantial prompted activity cannot, in engage interests, immedia of sufficient legal adverse charge of in copyright owners’ aof the issuance reality warrant cy and contro Thus, is no actual there fringement. Maryland Cas. Co. declaratory judgment.” defendants and inmates versy between Co., 312 U.S. & Oil Coal v. Pacific Declar support that would and Swank Films 85 L.Ed. 61 S.Ct. Judgment Act atory cases, copyright and patent dis remand, we directed 2. On controversy “defendant if is an actual “consider, obtaining the after trict court has ei declaratory lawsuit judgment Arkansas, Attorney General views charged impliedly or expressly ther F.2d joined.” 953 should be [ADC] whether Med infringement.” Sherwood infringement received ADC Deknatel, at 379. Indus., Inc. v. ical and show to rent letter, it continues and Cir.1975). copy The defendant 724, 727 If ADC in its videotaped movies intent to evidenced have must right owner intent present credibly a asserted by charge or usually copyright, enforce n showings, it these home-use-only movies as such infringement, charge of threatened declaratory standing seek the would And attorney to ADC. letter the 1985 not in activity would that such must have en judgment plaintiff declaratory However, copyrights. fringe owners’ activity could consti which “present gaged in involuntarily join later and though invited steps taken or concrete infringement tute steadfastly action, ADC joined in the activity.” BP such to conduct intent with the copyright position on these to take 4 refused Corp., Carbide v. Union Ltd. Chemicals evidence no other There is issues. (Fed.Cir.1993). copyright aIn Swank, any copyright Films, actually record it has ease, must show “plaintiff ADC way in which objects to the owner publish the ma- preparing or is published obtaining now showing ever, mov- problems one of the with advisory opin Accordingly, ies. there is no ions they is that are made advisory on rec present activity, whose or intended present ords. Because ADC elected intervene activity, infringement. could constitute to aggressively challenge own position, ers’ we do not know the factual The inmates suggest nonetheless details surrounding showing joinder video ADC’s as an plaintiff, taped prisons, movies more, nor do without created an actual controversy. know purposes aspect served this 19(a), disagree. which authorizes penal ADC’s joinder program. These kinds of unwilling plaintiffs, facts pro “makes no seem apply essential to both the fair vision for require use and per another public performance Sony son to maintain an statutes. See solely action vested *4 Corp. Studios, City Universal person, such other even though 464 its mainte 417, U.S. 774, 104 might nance S.Ct. result in 78 plaintiff.” benefit to 574 (1984) (fair use); Co., Coast v. 870, On Corp. Hunt Oil Command Video 872 Cir.), denied, Indus., 836, cert. Columbia 46, Pictures U.S. 777 F.Supp. S.Ct. (N.D.Cal.1991) 97 L.Ed. 789-90 See also (public perfor Rhode Island mance). Comm. Energy Admin., Accordingly, on v. General Servs. district court’s dis (1st Cir.1977); cussion 402-03 of the merits of copyright In re these is Interstate Freight System IMFS, Inc., Motor sues should be considered vacated as moot. (Bankr.W.D.Mich.1987). B.R. judgment The of the district court is af- A exception narrow general to this rule firmed. appointed We thank counsel for his originated Independent Tel. Wireless representation excellent of the inmates. Amer., Co. v. Corp. Radio (1926), 70 L.Ed. 357 a in case GIBSON, JOHN R. Judge, Circuit which the holder of an patent exclusive li dissenting. sought cense to sue infringement for of the I respectfully dissent. While ADC has patent. exception The is that an involuntary joined been party as a primarily for the plaintiff may joined be original cure the purpose of representing the interests of the plaintiffs inability press a claim if the inmates, it has position declined to take in original plaintiff and the involuntary plaintiff the lawsuit resulting dismissal, in its and its have “such a relationship that the absent counsel advises this court that join it did not party must allow' the use of his name as with the Inmate Council in appealing the plaintiff.” 3A James W. al., Moore et judgment. The today court’s decision comes ¶ Moore’s Federal Practice 19.06 at 84 down to the simple statement that “ADC’s 1995). ed. But the inmates and ADC have no to participate means there is no actu- such relationship here. ADC has obli no al controversy, essence, we affirm.” In gation, otherwise, contractual or to allow the have allowed an involuntary plaintiff to sim- inmates to use its name to secure declaratory ply abandon the interests ap- which it was judgment relief only that may ADC seek. pointed represent. 3. After concluding that pres- this ease ents no This runs controversy, actual counter to the principle of pro- court district viding involuntary went on for to consider the merits of status. An the in- involuntary plaintiffs copyright mates’ claims to act appeal because that judicial should not imply achieve economy in absence real event this con- held, troversy. court light involuntary in The of ADC’s nature of am- the sta- “somewhat biguous tus position,” would not it that make unsurprising there is declaratory that the involuntary The would fail court act. ease, ruled in Should this be owners, here, favor as it con- cluding plaintiffs prison actual should be showings public proceed per- are allowed to in the name of involuntary formances plaintiff. and are not fair use. We do not criticize the district court opinion The court’s acknowledges in- provisionally considering these issues. How- mate’s financial issue, stake in the own suit. his bring and control insured an inmate from rentals movie pays for ADC Entman at com- from by profits generated fund welfare employ- inmates,.and prison missary sales involuntary plaintiff, should ADC, as an to state goes on opinion The ees. “controversy” to eliminate be allowed fund all authority over total ADC statute however, This, is the its through inaction. control complete as well as expenditures, today. opinion result of court’s net showing of renting and over an shall action providing view, dis- my In at movies party the real name of prosecuted be the ADC joinder of court’s .triet “bailee, trustee of interest, specifying duty by fiduciary of a recognition as a viewed inor trust, with whom party express an In- inmates/Diagnostic Unit toward been a contract whose name involuntary concept of an Council. mate descriptions contains another” benefit situa- some equity. from plaintiff arises When this applied ADC. well be that can party recognition there is tions 19(a) provision with the with Rule read involuntary plain- joined [as sought to as an joinder allowing the named duty to allow tiff] has those sure make we should plaintiff, A. 7 Charles action. its name Here are effectuated. of the rule provisions al., and Proce- Practice Federal et Wright *5 of have funds essence bailee ADC is in duty allow to The at 76 dure trustee, inmates, possibly come from if implies that name plaintiff to rentals, a movie respect to the and between interest opposing is a con- name or whose with whom party defendant, then involuntary plaintiff and of the for the benefit has been tract controversy imputed to is re- involuntary plaintiff inmates. When The brought the action. here, act, we should not as it to fuses “the to as referred is sometimes of intent to frustrate allow that Thus, it follows plaintiff.” nominal party i.e., of rules, the interest pursue declara- be allowed should inmates allow counsel should represented. ADC. be name of’ “in the tory as actual inmates for the appointed act as a named is matter of who involuntary, but of the name plaintiffs, the federal important, because is resistant, plaintiff. passive and the as- upon premised system procedural named as those sumption that litiga- of the conduct in the rights and duties Entman, Compulsory Joinder F. tion. June Insurers; Federal Compensating of of Substan- the Role 19 and Procedure Civil of Law, 45 Case W.Res.L.Rev. tive America, of STATES UNITED dis- article Nevertheless, above-cited Plaintiff-Appellee, compensat- joinder of compulsory cussing the reference insurers, makes the author ing DREAMER, otherwise insured Defendant- when where Aaron situations Gabe claim, or refuses fails Appellant. but control permit it, then some states to assert 95-3868. No. claim, an exam- citing as bring the insurer Tice, 159 Ins. Co. York City New ple, Appeals, Court States United (insured (1944) P.2d Kan. Eighth Circuit. as trustee for itself sue March 1996. Submitted sue, refuses insurer, if the insured permit- insurer that the requires “justice July Decided action”). insur- Again, bring ted insurer, context, when the ance interest, protect likely conflict interest, may permit a court insured’s