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A dismissed lawsuit over the trademark rights to the title of the movie “9 1/2 Weeks” has been reinstated by the 2nd U.S. Circuit Court of Appeals. A three-judge panel reversed the decision of Southern District of New York Judge Loretta Preska, who had dismissed the case Jonesfilm v. Lion Gate International, 01-9437, for failure to join an indispensable party. The suit concerned attempts of producers to make a prequel to “9 1/2 Weeks,” the 1986 Mickey Rourke/Kim Basinger vehicle that explored themes of obsession and sexual control. Almost a decade after the original movie was released, the film’s producer, Jonesfilm, transferred some of its trademark rights to a British movie producer and distributor, NTTS Productions Ltd. The contract gave NTTS the right to use the title “9 1/2 Weeks” for a first sequel, in return for $700,000 plus additional fees. The contract also gave NTTS conditional options to make other “permitted sequels,” as long as the company first contacted Jonesfilm and negotiated a compensation agreement. After NTTS produced the sequel “Another 9 1/2 Weeks,” NTTS transferred the right to produce two new movies using the now-disputed trademark to Cinepix, which in turn transferred the rights to one of the defendants in the Jonesfilm suit, High Concept Productions Inc. When High Concept used those rights to produce its prequel “The First 9 1/2 Weeks,” Jonesfilm sued Lion Gate as well as other producers and distributors, among them Home Box Office. Lion Gate and its co-defendants moved to dismiss the suit, contending that NTTS was an indispensable party under Rule 19 of the Federal Rules of Civil Procedure. Judge Preska agreed, first finding NTTS to be a “necessary” party to the litigation under Rule 19(a), and then ruling that it was an “indispensable” party under Rule 19(b). The district judge said Jonesfilm’s case depended on “what rights were transferred from Jonesfilm to NTTS in the 1995 Agreement,” including whether those rights allowed for the production of a prequel. She also said NTTS might be prejudiced by its absence from the case, and that Jonesfilm still had the option of pursuing a claim against NTTS in arbitration under California law. Writing for the 2nd Circuit, Judge Robert A. Katzmann said that the first issue was whether NTTS met the criteria for being a “necessary party” under Rule 19(a): “whether NTTS can claim an interest relating to the right to produce an additional movie using the trademark ’9 1/2 Weeks.’” For a party to be necessary under Rule 19(a)(2), a claim must be strong enough that its resolution would “as a practical matter impair or impede the person’s ability to protect that interest,” or would “leave any of the persons already parties subject to a substantial risk of incurring double, multiple, or otherwise inconsistent obligations by reason of the claimed interest … “ The rule, Katzmann said, requires “more than an unsupported assertion that NTTS has a claim,” to produce an additional movie. And in the court’s view, he said, “NTTS does not have a colorable claim,” to make another movie, and “at most had a conditional option to produce an additional film, not an absolute right.” “It is undisputed that the plaintiff was not contacted by NTTS or any other entity about the production of ‘The First 9 1/2 Weeks,’” he said. “Moreover, the subsequent transfer of rights by NTTS to the defendants did not transform the conditional option into an absolute right.” The defendants had also argued on appeal that NTTS’ interests would be affected if the district court needed to resolve a factual dispute over NTTS’ obligations to Cinepix. But here, Judge Katzmann said, there is no factual dispute, because it is uncontested that Jonesfilm was never contacted for negotiations on the use of the trademark for a possible prequel. “In sum, because it is undisputed that the plaintiff was not contacted before the production of ‘The First 9 1/2 Weeks,’ there is a clear basis for deciding that the defendants had no right to make an additional movie based on ’9 1/2 Weeks’ that would not affect NTTS’s interests,” Katzmann said. “We conclude that NTTS is not a necessary party.” Judges Dennis Jacobs and Pierre N. Leval joined in the opinion. Barry L. Goldin of Allentown, Pa., and Deyan Ranko Brashich of New York represented Jonesfilm. Marcia B. Paul and Catherine McHale of New York’s Kay & Boose represented the defendants.

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