Trademark Properties v. A&E Television Networks, 4th Cir. (2011)
Trademark Properties v. A&E Television Networks, 4th Cir. (2011)
No. 09-1825
TRADEMARK
PROPERTIES
INCORPORATED,
a
South
Corporation; RICHARD C. DAVIS, an Individual,
Carolina
Plaintiffs - Appellees,
v.
A&E TELEVISION NETWORKS, a Joint Venture of the Hearst
Corporation; DEPARTURE FILMS, an Entity of Unknown Origin,
Defendants Appellants,
and
ABC, INCORPORATED; NBC UNIVERSAL; DOES 1-20, Inclusive,
Defendants.
Appeal from the United States District Court for the District of
South Carolina, at Charleston. C. Weston Houck, Senior District
Judge. (2:06-cv-02195-CWH)
Argued:
Decided:
Richard
C.
Davis
approached
Defendant
A&E
This dispute
Plaintiff
of
the
completed
net
revenues
filming
prior
from
the
three
trial. 2
to
seasons
Defendant
that
had
successfully
After
district
Plaintiff
five
court,
little
over
days
of
jury
returned
$4
trial
million,
in
a
South
Carolina
verdict
awarding
essentially
half
of
the
in
its
because
the
evidence
was
legally
Plaintiff
Davis
incorporated
Plaintiff
Trademark
Properties, Inc. as part of his real estate business.
While
both are Plaintiffs in this suit, for simplicitys sake we refer
to Davis as Plaintiff.
2
After
I.
We review the district courts denial of Defendants Rule
50(b) motion for a judgment as a matter of law de novo.
Sloas
v. CSX Transp. Inc., 616 F.3d 380, 392 (4th Cir. 2010).
In
301, 312 (4th Cir. 2010) (quoting ABT Bldg. Prods. Corp. v.
Natl Union Fire Ins. Co., 472 F.3d 99, 113 (4th Cir. 2006))
(internal citations omitted); see also Fed. R. Civ. P. 50(a)(1)
(providing a court may grant a party judgment as a matter of law
if
reasonable
jury
would
not
have
legally
sufficient
We review
Reeves
II.
Given
that
standard
of
review,
we
have
gleaned
and
so
is
underpriced
South
Carolina
properties
to
real
renovate
estate
and
broker
sell,
who
engaging
buys
in
In 2003,
In
television
2004,
Plaintiff
networks,
submitted
including
the
pilot
Defendant.
to
multiple
Defendants
vice
and
resale
of
the
real
estate
but
that
they
would
Nordlander,
had
entered
into
an
oral
contract
to
produce
net
revenues
equally,
subject
to
approval
by
shortly
terms
of
the
Defendant.
June
14
thereafter
contract
with
which
three
Plaintiff
other
confirmed
representatives
the
of
between
Plaintiff.
production
company,
Departure
Films,
and
during
e-mailed
Plaintiff
that
[t]he
board
approved
the
But, as
must be the case since the parties came knocking on the Courts
door,
their
parties
business
could
compensation.
not
relationship
resolve
fell
the
apart
matter
in
of
2006.
The
Plaintiffs
signed
with
talent
agreement
another
television
network.
Plaintiff any money, let alone half of the series net revenue,
for his role in its production.
III.
We start by setting forth the principles of contract law
relevant to Defendants claim that it is entitled to judgment as
a
matter
diversity,
law.
(4th
of
we
law.
are
[B]ecause
bound
by
the
the
matter
applicable
is
before
state
us
in
substantive
1996).
And,
because
neither
party
contests
the
district courts ruling that New York law controls, we apply the
laws of New York.
Absent prohibition by the statute of frauds, oral contracts
are just as binding as written contracts under New York law. 3
Stein v. Gelfand, 476 F. Supp. 2d 427, 431 (S.D.N.Y. 2007).
establish
Defendant
breached
their
oral
contract,
To
Plaintiff
Defendant does
defense on appeal.
not
raise
the
statute
of
frauds
as
Register.com, Inc. v.
Verio, Inc., 356 F.3d 393, 427 (2d Cir. 2004) (quoting Louros v.
Cyr, 175 F. Supp. 2d 497, 512 n.5 (S.D.N.Y. 2001)).
[M]utual
Johnson,
(S.D.N.Y.
629
F.
Supp.
2d
321,
330
2009)
(quoting
Tractelbel Energy Mktg., Inc. v. AEP Power Mktg., Inc., 487 F.3d
89, 95 (2d Cir. 2007)), affd, 355 F. Appx 454 (2d Cir. 2009).
The same is true whether the parties formed the contract orally
or with the written word.
oral,
the
party
asserting
its
enforceability
bears
an
even
binding
obligation.
There
must
be]
overall
N.F.L.
Ins. Ltd. by Lines v. B&B Holdings, Inc., 874 F. Supp. 606, 613
8
enforceable
contract.
Express
Indus.,
715
N.E.2d
at
1053.
acceptance
contract.
Id.
will
But,
give
even
rise
assuming
to
an
enforceable
Plaintiffs
offer
was
We therefore move to
long
as
the
offer
does
not
dictate
otherwise,
oral
427
(quoting
Maffea,
668
N.Y.S.2d
at
654)).
Plaintiff
Supp.
refused
give
revealed
to
no
J.A.
that
conduct
at
2.
The
instruction,
.
that
district
court,
concluding
the
could
be
however,
trial
interpreted
had
as
court
instructed
the
jury
that
Id. at 4.
[a]
contract
Instead,
is
an
manifested
by
words,
oral
or
written.
J.A.
at
55960.
On
offer
by
conduct.
To
the
contrary,
Plaintiff
contends
11
comply
with
the
terms
of
the
offer
and
be
clear,
in
order
unambiguous.).
When
to
an
be
effective,
offeree
must
be
communicates
positive
an
and
acceptance
person
could
view
as
assent,
rejection,
or
an
12
So
long
as
the
offerors
interpretation
of
the
In other
offeree
must
misinterpretation.
assume
the
risk
of
the
offerors
Id. at 331.
ordinarily
Investors
accompany
Ltd.
v.
and
Korea
represent
Tungsten
known
Min.
Co.,
intent.
Ltd.,
438
242
inquiry.
(N.Y.
1982).
Therefore,
ours
is
an
objective
Rather, in deciding
their expressed
In determining
whether
the
parties
entered
into
a
contractual
agreement and what were its terms, disproportionate
emphasis is not to be put on any single act, phrase or
other expression, but, instead, on the totality of all
of these, given the attendant circumstances, the
situation of the parties, and the objectives they were
striving to attain. . . .
Id. (quoting Reprosystem, B.V. v. SCM Corp., 522 F. Supp. 1257,
1275 (S.D.N.Y. 1981)).
More
94-94A-94B, 24 F.3d 447, 449 (2d Cir. 1994) (citing Four Seasons
14
Hotels,
Ltd.
v.
Vinnik,
515
N.Y.S.2d
1,
(N.Y.
App.
Div.
before
the
1987)).
A.
Defendant
argued
in
its
Rule
50(b)
motion
way, explaining:
[I]n [Plaintiffs] testimony he says clearly and
unequivocally that Mr. Nordlander accepted those
terms, and that he reached an oral contract with the
[D]efendant which incorporated those terms that he has
stated.
He was asked, . . . did Charles Nordlander
ever say to you, did he in plain English say, yes,
sir, I agree [Defendant] will share 50 percent of its
profits?
Answer: Absolutely he did.
Absolutely.
There are statements like that throughout the record,
where he said he told Mr. Nordlander what he
wanted. . . . I think that testimony where he says he
made the proposal to [D]efendant, and Mr. Nordlander
accepted it and agreed to it absolutely, indicates
that the parties did have a meeting of the minds, they
did reach a contract, as stated from the portions of
the record I just quoted, and that [D]efendant
breached that contract, because they did not pay to
[P]laintiff the compensation therefore that they
agreed to pay.
J.A. at 52628 (quoting J.A. at 25354).
On appeal, Defendant argues that Plaintiffs testimony that
the
district
conclusory
court
assertions
relied
as
upon
to
the
(quoted
legal
above)
meaning,
constitutes
or
his
own
testimony
phone
call.
cannot
be
As
relied
result,
upon
15
to
Defendant
determine
asserts
what
it
such
is
Nordlander
actually
said
and
whether
any
such
statement
Despite
Defendant
claims
that
the
only
specific
words
of
the
offer
on
behalf
of
Defendant.
So,
Defendant
June
phone
conversation.
According
to
Plaintiffs
based,
third-party
production
company
to
film
future
episodes:
A: And [Nordlander] said, . . . Im having a hard
time getting these guys to let youwe like to have
production companies that are right here that are real
close that are in New York. . . . Ive got a company
there is two or three companies I want you to talk to.
These guys are working on something for me right now.
They are editors from HBO, and thats what they do.
***
So anyway, we started talking about how we were going
to engage a third-party production company, and you
know, threw out, like I said, a couple of names, and
he wanted me to meet these guys and talk with them.
Id.
at
148,
150.
They
discussed
the
series
revenues.
17
Taking
into
account
that
concern,
made
the
following proposal:
A. And, I said, Charles, look, Im a big boy. . . .
Ill take that risk.
But heres the deal.
I will
share revenue with you on this.
This is my show.
Ill do all the real estate . . . . All that risk is
on me. Ill buy all the properties. Ill put all the
employees on it. I will pay for everything. Ill do
every bit of that.
And then, you know, he talked
about the production, how much I had into it. I told
him 85,000, and he said it was unrealistic, that we
probably had costs in there that we didnt take into
account . . . but . . . if we were going to have a
shot at this, and was going to be successful, then we
had to keep the production costs down.
And I dont
recall the exact number, but I know it was below
$150,000. . . .
He said if we can keep that below
there.
Id. at 150.
bear the cost of producing the show, and [Plaintiff] would track
his out-of-pocket expenses related to production of the show. At
the end of the season, the parties would subtract their expenses
from
the
show[]s
revenues
and
18
evenly
divide
any
surplus.
responded
to
Plaintiffs
proposal
by
warning
19
So
Q. All right.
Can you go over for me what the terms
of the agreement were?
A. Yeah.
It was very simple.
I actually used an
example . . . I told him . . . Charles, look, Im a
real estate guy. . . . [I]f Im brokering the deal, I
take a commission . . . . I used an example, I bought
a hotel years ago in Mount Pleasant. I bought it out
at a foreclosure sale, and I bought it for $2.1
million. . . . So I called this gentleman up . . . .
And I said, You know, if you can give me the money,
you know, I will take care of everything on my side,
Ill buy it, Ill fix it up and sell it, we split the
profits.
***
A. And I said, So, Charles, just to show you what a
good partner I am, on doing deals, here is what
happens. We needed $2.1 million. I only needed five
percent.
The next day, I went and bid on the
property.
I got it.
I needed my five percent.
He
wired it down. . . . And so he had obligated, he was
committed, fully ready, willing and able to send me
down 2.1 million. I ended up not even having to take
it.
We took our piece of paper and we sold our
20
at
15355.
Nordlander
reiterated
his
concern
that
okay,
it,
get
although
he
remained
concerned
that
the
phone
he
21
and
Nordlander
had
formed
cross
one
examination,
condition
on
Plaintiff
the
testified
agreement
going
Nordlander
into
effect
in
the
phone
conversation
that
led
him
to
believe
approval,
would
make
the
proposed
television
show
and
23
testified
over
and
over
again
in
unequivocal
say
that
statement
does
not
objectively
We can
convey
We
24
understood
Nordlanders
equivocal
statement
as
an
acceptance,
testimony
reveals
that
he
and
Nordlander
times
in
various
ways,
even
prior
deal.
To
this,
Plaintiff
testified
Nordlander
said
deal
was
contingent
on
anything
else
or
give
any
revenue,
only
that
such
split
would
likely
not
be
Furthermore, no evidence
the
agreement
eventually
to
split
notified
making
of
the
profits
Plaintiff
net
that
equally.
[t]he
J.A. at 625.
show,
it
seems
And,
board
Defendant
approved
the
that
the
board
in
the
record
suggests
that
any
of
Defendants
for
our
agreement.
series,
but
did
not
approve
fifty-fifty
from
Plaintiff
which
objectively
reasonable
treated
jury
could
Nordlanders
conclude
statement
as
that
an
be
the
Defendant.
subject
of
thirteen
television
course
of
made
by
shows
with
Defendant
business
to
on
take
using
J.A. at 181.
certain
advantage
of
products
product
He also
in
the
placement
Id. at
18286.
Id. at 706.
He said in an
If
you
guys
are
participating
with
advertising,
sponsorship, dvd sales, ectm [sic] without us, that was not what
I was promised.
Id. at 698.
During one
J.A. at 766.
Naturally,
Defendant
points
to
other
statements
by
27
reasonable
We acknowledge that is a
interpretation
of
those
communications.
Plaintiff additionally
argues that the jury could also have believed he and Defendant
were renegotiating their agreement for season two.
seem
to
have
been
the
case,
given
that
the
That would
jury
awarded
And, as
See
In re Dana Corp., 574 F.3d 129, 152 (2d Cir. 2009) (But a jury
is free to believe part and disbelieve part of any witnesss
testimony.).
Moreover,
we
must
disregard
all
evidence
Reeves,
530
U.S.
at
150.
None
of
the
evidence
28
Plaintiff and Nordlander did not discuss let alone agree on the
following material terms: (1) the categories of revenue that
would
be
expenses
included
that
in
would
net
be
revenue,
deducted
from
(2)
the
categories
net
revenue,
(3)
of
the
where
Cleveland
omitted).
parties
Wrecking,
do
23
not
agree
F.Supp.2d
at
to
292
its
material
(internal
terms.
quotations
588
quotations
(2d
and
Cir.
1987)
citations
(applying
omitted).
New
York
law)
Nonetheless,
(internal
[s]triking
29
The Court of
30
J.A. at 52425.
He
differentiate
companies
explained
revenue
that
had
from
that
their
advertising
previously
done
agreement
during
business
the
with
or
did
not
show
by
already
conclude
sufficient
evidence
exists
from
We
which
and
Nordlander
discussed
the
duration
and
termination
of
either
Nonetheless,
party
could
Plaintiff
cancel
testified
31
the
they
agreement.
agreed
Id.
at
Defendant
262.
could
Id. at 264.
as
long
as
it
was
successful,
i.e.,
received
definite,
consistent
with
the
parties
Therefore,
which
jury
Plaintiff
could
presented
conclude
the
sufficient
parties
evidence
agreed
upon
to
Defendant
the
does
identity
not
of
actually
the
make
parties
an
to
argument
the
contract,
other
than
to
562
partys
F.3d
599,
single
607
(4th
declarative
Cir.
2009)
sentence,
(explaining
without
that
citations
a
to
jury could conclude Defendant knew who Plaintiff was and that
Plaintiffs
real
estate
flipping
32
business
organization
was
called
Trademark
explaining
that
Properties.
Plaintiff
See
made
J.A.
clear
at
to
590
him
(Nordlander
that
Plaintiff
to
the
oral
contract
whether
Nordlander
agreed
on
Defendant
maintains
that
Plaintiffs
In
repeatedly-
statement
of
New
York
law
is
not
entirely
York
court
declared
that
as
matter
of
law
parties
objectively-manifested
intent.
Winston
v.
And,
the sole case Defendant cites on this point makes clear that to
discern that intent, we consider a number of factors, including:
33
v.
CMGI,
Inc.,
64
F.
Appx
301,
303
(2d
Cir.
2003)
(quoting R.G. Group, 751 F.2d at 7576 (applying New York law))
(emphasis
added).
No
single
factor
contrary
concerns
to
decisive,
but
each
Defendants
those
is
complex
assertion,
and
whether
substantial
the
business
the
document.
parties
intended
to
be
bound
without
written
Bank, N.A., 996 F.2d 568, 576 (2d Cir. 1993) (explaining that
these
factors
guide
the
fact-finders
determination
of
the
34
business
matter
and
it
may
well
not
have
been
But we also
note a reasonable jury could find that the contract at issue was
not so complex.
have
willingness
also
produce,
considered
pay
for,
Defendants
and
air
demonstrated
television
seriesa
to
substantial
Again, Defendant
document.
the
could
jury
have
reasonably
concluded
from
the
trial
believed,
he
was
promised
written
contract
by
Mr.
J.A. at
does not necessarily mean the parties did not intend to be bound
until such reduction; it may just reveal that the party wants to
avoid a he said, she said argument down the road as to what
the parties orally agreed.
freedom
to
contract
orally
remains
even
if
the
parties
In such a
context
of
the
controversy
being
settled,
and
general
In re Brown, 885
N.Y.S.2d 222, 223 (N.Y. App. Div. 2009) (internal quotations and
citations omitted).
Plaintiff
signed
two
releases
after
the
June
phone
all
claims,
losses,
costs,
expenses,
settlements,
the
inaccuracy,
representation,
herein.
alleged
warranty,
J.A. at 690.
breach
or
covenant,
actual
agreement
breach
.
of
.
any
made
[Plaintiffs]
[Plaintiff],
and
name
the
and
right
biographical
to
exhibit,
material
concerning
distribute,
transmit,
arising
out
of
37
the
production,
exhibition,
Departure
Defendant.
claims
subsequently
These
documents
Plaintiff
might
J.A. at 691.
assigned
only
have
all
release
arising
of
It is undisputed
its
rights
to
from
any
Defendant
from
the
display
of
the
exhibition,
of
the
show
distribution,
(the
Personal
promotion
Release).
and/or
Thus,
the
IV.
Now, we turn to Defendants contention that the district
courts
incorrect
jury
instructions
and
evidentiary
rulings
We
Cir.
2006)
(We
review
district
courts
evidentiary
States
(internal
v.
Myers,
quotations
589
and
F.3d
117,
citations
123
(4th
omitted).
Cir.
But,
2009)
[u]nless
stage
of
the
proceeding,
the
court
must
disregard
At
all
can say with fair assurance, after pondering all that happened
without stripping the erroneous action from the whole, that the
judgment
was
substantially
swayed
by
the
error,
and
801(d)(2)(A).
According
to
Defendant,
maintains
Paragraph
39
11
is
inconsistent
with
inadmissible
because
it
was
not
adopted
by
Defendant
at
811;
see
also
id.
at
26970
(defense
counsel
cross-
Defendant
during
which
Plaintiff
40
stated
about
the
conference
this
evidence
deal
with
contradicts
[Defendant].
Plaintiffs
J.A.
trial
at
276.
testimony
This
that
the
with
Plaintiffs
Nordlander.
complaint
would
Therefore,
have
only
the
admission
reiterated
of
Plaintiffs
conflicting account.
B.
In support of its defense that Nordlander and Plaintiff
never
made
revenue-sharing
introduce
testimony
employees
to
the
from
effect
contract,
Nordlander
that
and
reality
Defendant
two
of
television
sought
to
its
other
stars
never
As
an
narrative
opinion
facts
experts.
on
[they
the
have]
basis
of
relevant
perceived
historical
without
being
or
deemed
Wanzer, 897 F.2d 703, 706 (4th Cir. 1990) (internal quotations
and citations omitted)).
these
individuals
had
not
been
designated
as
experts
the
district
court
ruled
41
as
to
all
three
of
In
the
controverted
witnesses
opinions:
disclosed as an expert.
[T]his
witness
was
not
J.A. at
363.
A
witness
testifying
not
as
an
expert
must
limit
his
rationally
based
on
the
perception
of
the
witness,
(b)
on
[their]
personal
knowledge
and
perception.
witnesses
specialized
industry.
regarding
its
allowed
to
knowledge
own
standard
testify
that
as
to
practices
based
upon
the
and
entire
each
their
television
witness
was
experience
and
specialized
knowledge
of
the
42
television
industry,
the
and
expressing
.
his
when
[Plaintiff]
intent,
and
makes
his
that
expression,
understanding
of
the
J.A. at 17071.
jury:
What counsel is saying is that when he says he owns
it, thats a legal conclusion, and he may own it and
he may not own it legally.
And the reason I let him
testify to it is because thats what he says because
he thinks he owns it, and he expressed that thought in
his conversation.
Im not sure what will develop in
this case at any later period of time. It may be that
the question of ownership is a serious issue that you
have to decide.
And if it does become an issue that
8
43
17172.
Defendant
requested
jury
instruction
that
charge, explaining:
[M]y charge says nothing about ownership. It says to
prove a breach of contract, youve got to prove this,
this, and this. . . . [Plaintiff] inserted those words
[of ownership and theft], but ownership is not
necessary . . . Im going to tell them what he has to
prove, and he doesnt have to prove ownership.
Id. at 43839.
The district court did not abuse its discretion in either
failing to sustain Defendants objection or refusing to give the
requested curative instruction.
to
decide
and
that
if
44
it
was
not,
then
Plaintiffs
When the
of
only
owners
half
first
of
all
seasons
seasons
profits,
profits,
rather
that
it
than
an
was
not
to
next
instruct
words of assent.
complains
the
jury
the
on
Id. at 43940.
district
the
requirement
erroneously
of
specific
court
Id.
2002), and Agric. Ins. Co. v. Matthews, 749 N.Y.S.2d 533 (N.Y.
App. Div. 2002).
Nor
refused
to
give
this
requested
instruction)
and,
more
law,
that
they
could
recognize
contract
by
cherry-
district
court
the
jury
there
are
46
three
contract
formation
under
New
York
law
make
clear,
the
we
need
to
determine
that
there
is
parties?
50/50
revenue
split
is
revenue
sharing
between
the
two
review
district
courts
decision
to
respond
to
2007).
responding
to
jurys
request
for
An error
Id.
the
essentially
questions,
invited
the
Defendant
jury
to
claims
craft
the
its
By failing to
district
own
version
court
of
48
First, the district courts answer did not misstate the law
or the facts.
craft its own contract, but it did properly remind the jury
that
only
the
jury
could
find
or
determine
whether
to
believe
parts
and
disregard
parts
of
Plaintiffs
the
parties
had
agreed
to
split
equally
the
shows
V.
For
the
reasons
herein,
we
affirm
the
district
courts
49
Davis
deserves
to
be
compensated
for
the
services
he
Daviss position
is made all the more sympathetic by the fact that A&E bears
significant responsibility for the failure to reduce a contract
memorializing its understanding to writing.
Moreover,
claims.
the
it
certainly
appears
that
Davis
had
viable
majority
recognizes,
Davis
also
asserted
acceptance
As
by
are
statement,
thus
Okay,
left
with
okay,
the
get
contention
it,
J.A.
at
that
258,
Nordlanders
constitutes
underlying
contract
formation.
Contracts
require
Because
do
not
believe
reasonable
person
would
51