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.
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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 28 U.S.C. § 1927. 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, 807 F.3d 541,
544 (2d Cir. 2015), cert. denied, 136 S. Ct. 2015 (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 17 U.S.C. §§ 102 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 17 U.S.C. § 106.
Briarpatch Ltd. v. Phoenix Pictures, Inc., 373 F.3d 296, 305 (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 Id.
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 17 U.S.C. § 102(a)(6), even if it contains material, such as
Baiulʹs performance, that may not be copyrightable. See Natʹl Basketball Assʹn v.
Motorola, Inc., 105 F.3d 841, 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, 805 F.2d 663, 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., 713 F. Supp.
2d 215, 230‐31 (S.D.N.Y. 2010) (finding conversion claim preempted by the Copyright
Act); Weber v. Geffen Records, Inc., 63 F. Supp. 2d 458, 463 (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, 688 F.3d 98, 109 (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., 420 F.3d 1090, 1094 (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., 760 F.2d 14, 18 (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., 453 F.2d 914 (4th Cir. 1971))).
Baiulʹs reliance on Sheldon v. Amperex Electronic Corp, 449 F.2d 146 (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). Id. at 147. 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, 634 F.3d 224, 230 (2d Cir. 2011). We review orders denying
voluntary dismissal pursuant to Rule 41(a)(2) for abuse of discretion. Id.
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., 900 F.2d 12, 14
(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, 634 F.3d at 230 (quoting Camilli v. Grimes, 436 F.3d 120, 123 (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., 39 F.3d 395, 402 (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., 771 F.3d 93, 109 (2d Cir. 2014).
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As an initial matter, Baiul did not request leave to amend. See Gallop v.
Cheney, 642 F.3d 364, 369 (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., 551 F.3d 122, 126 (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 28 U.S.C. § 1927, 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.,
218 F.3d 109, 115 (2d Cir. 2000) (quoting United States v. Intʹl Bhd. of Teamsters, 948 F.2d
1338, 1345 (2d Cir. 1991)). Sanctions may be imposed only ʺwhen there is a finding of
conduct constituting or akin to bad faith.ʺ Id. (quoting Sakon v. Andreo, 119 F.3d 109, 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, 564 F.3d 110, 113 (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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