Opinion
03-CV-0656
October 10, 2003
RAYMOND J. DOWD, ESQ., DOWD MAROTTA, LLC., New York, NY, for Plaintiff
ROBERT S. MELONI, ESQ., ROBERTS. MELONI, P.C., New York, NY, for Defendants
RONALD W. ADELMAN, ESQ., ROBERTS. MELONI, P.C., New York, NY, for Defendants
MEMORANDUM-DECISION and ORDER
I. INTRODUCTION
Plaintiff Scott Francis Carroll commenced the instant action asserting claims of copyright infringement (First Cause of Action); breach of contract (Second Cause of Action); tortious interference with contract (Third Cause of Action); and a violation of the Lanham Act, 15 U.S.C. § 1125(a) (Seventh Cause of Action). The remaining causes of action seek an injunction (Fourth Cause of Action); an accounting (Fifth Cause of Action); and an impounding (Sixth Cause of Action). Defendants now move to dismiss pursuant to Fed.R.Civ.P. 12 on the grounds that: (1) the Court lacks personal jurisdiction over Defendants Brian Kahn and The Sonoma Society; and (2) Plaintiff has failed to state a claim of (i) copyright infringement; (ii) breach of contract; (iii) tortious interference with contract; or (iv) the false designation of origin.
The Complaint names the Sonoma Valley Film Festival as a named Defendant. Apparently, there is no such entity. Defendants represent (and Plaintiff does not dispute) that the film festival is an event run by the Sonoma Society. Accordingly, for purposes of the instant discussion, the Court will refer to the Sonoma Society instead of the Sonoma Valley Film Festival.
II. FACTS
The following facts are taken from the Complaint and, for purposes of the instant motion, are assumed to be true.
Defendants Ben Kahn and Tim Kahn retained Plaintiff in December 2000 to produce a film, The Last Link (the "film"), about the dying culture of shepherding in France and the United States. Plaintiff created the business plan for the film, created the promotional materials for the film, co-authored the storyline, co-authored the treatment, performed all pre-production work and created and produced the film. Ben and Tim Kahn promised Plaintiff that he would receive credit as co-author and produced for the film. Despite Plaintiff's work and the expectation that there would be a written contract, the parties never entered into a written contract. At some point in time, Ben and Tim Kahn sought to change Plaintiff's responsibilities. They demanded that he assume fund raising responsibilities and reveal his contacts in the industry. Plaintiff refused and demanded a written contract. Defendants demanded that Plaintiff enter into a certain side agreement. Plaintiff refused. Defendants responded that they needed to assess the work Plaintiff claimed to have completed before they could come to terms on a written agreement. On October 5, 2001, Defendants terminated their relationship with Plaintiff.
In June 2001, Plaintiff submitted a copyright application to the United States Copyright Office for the film, naming himself and Ben Kahn as the copyright claimants. A copyright registration, PAU 206270142, was issued with Plaintiff and Ben Kahn as the authors. Plaintiff alleges that Defendants used Plaintiff's storyline and treatment for the film, failed to give him credit as producer and author of the film, failed to compensate him for his services, improperly claim ownership of the rights to the film and copyright, and improperly aired the film without Plaintiffs consent and in violation of his exclusive copyright.
In his copyright cause of action, Plaintiff claims that he and Ben Kahn jointly authored the treatment for the film focusing on the life ofPete Garni no. that he solely authored the treatment for the film focusing on the life of Johnny Camino. and that Defendants wrongfully used Plaintiff's treatment focusing on the life of Johnny Camino.
In his breach of contract cause of action, Plaintiff claims that Defendants failed to give him proper credit as author of the Johnny Camino story, did not give him proper credit as the producer of the film, wrongfully attempted to alter the duties of his position, wrongfully terminated his employment and failed to compensate him for the work he did perform.
With respect to the tortious interference with contract claim, Plaintiff contends that Defendants Brian Kahn and Artemis induced Ben and Tim Kahn to breach their contract with Plaintiff.
Finally, with respect to the Lanham Act claim, Plaintiff contends that Defendants improperly marketed the film as belonging to them and, thus, falsely represented the origin of the film.
III. STANDARD OF REVIEW
When reviewing a motion to dismiss, the Court "must accept all allegations in the complaint as true and draw all inferences in the non-moving party's favor." Patel v. Contemporary Classics of Beverlv Hills. 259 F.3d 123, 126 (2d Cir. 2001). "A court may dismiss a complaint [under Fed.R.Civ.P. 12] only if it is clear that no relief could be granted under any set of facts that could be proved consistent with the allegations.'" Swierkiewicz v. Sorema N.A., 534 U.S. 506, 514 (2002) (quoting Hishon v. King Scalding. 467 U.S. 69, 73 (1984)). "The issue is not whether a plaintiff will ultimately prevail but whether the claimant is entitled to offer evidence to support the claims.'" York v. Ass'n of the Bar of the City of New York. 286 F.3d 122, 125 (2d Cir.) (citing Scheuer v. Rhodes. 416 U.S. 232, 236 (1974)), cert. denied. 537 U.S. 1089 (2002). A complaint need only include 'a short and plain statement of the claim showing that the pleader is entitled to relief.'"Swierkiewicz. 534 U.S. at 512 (quoting Fed.R.Civ.P. 8(a)). "This simplified notice pleading relies on liberal discovery rules and summary judgment motions to define disputed facts and issues and to dispose of unmeritorious claims." Id. Thus, a complaint is sufficient if it gives the defendant fair notice of the plaintiffs claims, the grounds upon which they rest, and states claims upon which relief could be granted. Id. at 514.
IV. DISCUSSION
a. Personal Jurisdiction
Defendants Brian Kahn and The Sonoma Society move to dismiss pursuant to Fed.R.Civ.P. 12(b)(2) claiming lack of personal jurisdiction. These two Defendants claim that they have not conducted business in New York, did not commit a tort in New York and did not commit a tort outside of New York causing injury inside New York.
On a motion to dismiss for lack of personal jurisdiction, the Plaintiff bears the burden of demonstrating the Court has jurisdiction. Kernan v. Kurz-Hastings. Inc., 175 F.3d 236, 240 (2d Cir. 1999). Where the motion to dismiss is made prior to discovery, the plaintiff can defeat the motion with "legally sufficient allegations of jurisdiction."Metropolitan Life Ins. Co. v. Robertson-Ceco Corp., 84 F.3d 560, 566 (2d Cir. 1996); see Ball v. Metallurqie Hoboken-Overpelt S.A., 902 F.2d 194, 197 (2d Cir. 1990); Jazini v. Nissan Motor Co., Ltd., 148 F.3d 181 (2d Cir. 1998). A plaintiff's averment of jurisdictional facts must be credited as true. In re: Magnetic Audiotape Antitrust Litigation. 334 F.3d 204, 206 (2d Cir. 2003).
There are no allegations in the Complaint that Brian Kahn or The Sonoma Society transact business or contract to supply goods or services in New York. Thus, jurisdiction cannot be sustained on the basis of N.Y.C.P.L.R. § 302(a)(1). There similarly is no basis for invoking jurisdiction pursuant to N.Y.C.P.L.R. § 302(a)(3). The Complaint alleges that "Defendants committed a tortious act without the State causing harm to Plaintiffs copyright property within New York and reasonably should expect the act to have consequences in the State." (Compl. ¶ 3.) "[S]ection 302(a)(3) is not satisfied by remote or consequential injuries such as lost commercial profits which occur in New York only because the plaintiff is domiciled or doing business here." Lehigh Valley Indus, v. Birenbaum. 527 F.2d 87, 94 (2d Cir. 1976). An injury occurs in New York only if New York "is the location of the original event which caused the injury." Hermann v. Sharon HOSP., Inc., 135 A.D.2d 682, 683 (2d Dep't 1987): see DiStefano v. Carozzi North Am., Inc., 286 F.3d 81, 84-85 (2d Cir. 2001) (noting that the "original event" occurs where the first effect of the tort that ultimately produced the final economic injury is located). Here, the damage to Plaintiff is alleged to have been caused by showing the film on April 12, 2003 without giving proper credit to Plaintiff. Thus, the first effect of the tort that ultimately produced the final economic injury was in Sonoma, California; not in New York. Accordingly, Plaintiff has not set forth legally sufficient allegations to support the injury in New York requirement. Even assuming there has been an injury to property in this state, there are no allegations that Brian Kahn or The Sonoma Society either: (1) regularly do or solicit business, engage in any persistent course of conduct, or derive substantial revenue from goods used or consumed or services rendered in New York; or (2) derive substantial revenue from interstate or international commerce. N.Y.C.P.LR. § 302(a)(3). See Jazini. 148 F.3d at 184-85;Lehiqh Valley Indus., 527 F.3d at 93-94. The Complaint must, therefore, be dismissed as to Defendants Brian Kahn and the Sonoma Society for lack of personal jurisdiction.
b. Copyright Infringement
Defendants next move to dismiss the copyright infringement claim on the grounds that: (1) any copyright owned by Plaintiff is limited to the treatment and does not extend to the film; (2) Plaintiff's registration of the treatment is invalid because of his misrepresentation on the registration application; (3) Artemis is a co-owner of any copyright with rights to grant non-exclusive licenses in the copyright; and (4) Plaintiffs contributions are not copyrightable.
Under settled copyright law
[i]n the absence of an agreement to the contrary, one joint owner may always transfer his interest in the joint work to a third party, subject only to the general requirements of a valid transfer of copyright. However, one joint owner does not have the power to transfer the interest of another joint owner without the tatter's consent. . . . A transferee of one joint owner stands in the shoes of his transferor so that he may in turn grant nonexclusive licenses in the work.
1 Nimmer on Copyright § 6.11; see 17 U.S.C. S 201(d):Kaplan v. Vincent. 937 F. Supp. 307, 316 (S.D.N.Y. 1996). Furthermore, "one joint owner may grant a nonexclusive license in the entire work without consent of the other joint owners." 1 Nimmer on Copyright § 6.11; Morrill v. The Smashing Pumpkins. 157 F. Supp.2d 1120, 1126-27 (C.D. Cal. 2001).
Here, Plaintiff applied for and received a registration from the Copyright Office. The registration lists Plaintiff and Benjamin Kahn as co-authors. (Compl. Ex. C.) As such, there is a rebuttable presumption that they are, in fact, co-owners. 17 U.S.C. § 201 (a), 410(c);see, e.g., Medforms. Inc. v. Healthcare Management Solutions. Inc., 290 F.3d 98, 114 (2d Cir. 2002); Rogers v. Koons. 960 F.2d 301, 306 (2d Cir. 1992); Childress v. Tavlor. 945 F.2d 500, 505 (2d Cir. 1991) (joint authors hold undivided interest in the work): see also Banctraininq Video Systems v. First Am. Corp., 956 F.2d 268, 1992 WL 42345 (6th Cir. 1992) (table). There are no assertions in the Complaint that Benjamin Kahn is not a co-owner. According to the Complaint, Benjamin Kahn "assigned all rights in the film . . . to Artemis." As a co-owner, Ben Kahn had the right to assign his interest in the copyright to others, including Artemis.Kaplan. 937 F. Supp. at 316. There is no allegation that Ben Kahn was without power to assign his rights to Artemis. As the Second Circuit has stated:
The Complaint does not assert that the registration erroneously lists Ben Kahn as a co-owner. Any such assertion would be strange in light of the fact that Plaintiff prepared the application himself. (Compl. Ex. C.).
Infringement is the violation of an owner's copyright interest by a non-owner. 17 U.S.C. § 501 (a). The purpose of an infringement suit is to protect the owner's property interest. It is elementary that the lawful owner of a copyright is incapable of infringing a copyright interest that is owned by him; nor can a joint owner of a copyright sue his co-owner for infringement.Cortner v. Israel. 732 F.2d 267, 271-72 (2d Cir. 1984). Because a co-owner cannot be sued for infringement, no copyright claim can be asserted against Ben Kahn or Artemis (the assignee) and the First Cause of Action must be dismissed.
If the Court had personal jurisdiction over the Sonoma Society, the copyright claim against it would also be dismissed. The Complaint alleges that Artemis, with the assistance of Ben Kahn, Tim Kahn and Brian Kahn, submitted the film to the Sonoma Film Festival for screening. Because a copyright owner may grant a non-exclusive license to the copyrighted work to another without the consent of any joint owners, there can be no copyright action against Sonoma.
c. Breach of Contract
Defendants next move to dismiss the breach of contract claim on the ground that the documents annexed to the Complaint evidence that there was no contract and, in any event, there are no allegations of the basic elements of a contract in the Complaint. The Complaint alleges that "Plaintiff entered into an agreement for services and for the production of the film . . . with Defendants" and that Defendants breached the agreement by trying to change Plaintiffs obligations under the agreement, failing to give him the proper credits to which he was entitled to under the terms of the agreements, wrongfully terminating the contract, and failing to pay Plaintiff for his services under the contract. (Compl. ¶¶ 85-117.) Regardless of whether Plaintiff is likely to succeed on this claim, it states a claim upon which relief may be granted. Contrary to Defendants' assertion, Plaintiff need not plead all the material elements of a contract to state a claim. The claim gives Defendants fair notice of the claims and the grounds upon which they rest. At this early stage of the litigation, the Court cannot review the materials annexed to the Complaint and conclude as a matter of law that there was no agreement between the parties. Plaintiff is entitled to offer evidence, either at summary judgment or trial, in support of his claim that there is an agreement. Accordingly, Defendants' motion to dismiss the breach of contract claim is denied.
Because Defendants move to dismiss the tortious interference with contract claim on the ground that there was no contract and that Court has concluded that there may be a contract, that portion of their motion must also be denied.
d. Lanham Act
Finally, Defendants move to dismiss the Lanham Act claim on the grounds that: (1) falsely claiming ownership of a copyright cannot constitute false designation of origin under the Lanham Act as a matter of law; (2) the failure to give Plaintiff credit as the sole author fails to state a claim because the copyright registration lists Benjamin Kahn as a co-author; and (3) the failure to give Plaintiff credit as the producer fails to state a claim because Plaintiff did not perform the work of a producer, but only that of a co-producer. In opposition, Plaintiff states that his false designation of origin claim is not based on the filing of an alleged false copyright certificate, but is based on the failure to properly credit him for his role in the film.
Because Plaintiff states that he does not bring a false designation claim based on Artemis' filing of a copyright registration, the Court need not entertain the first ground for dismissal.
To the extent Plaintiff claims that Defendants repackaged Plaintiff's product as their own, then the Complaint states a claim. Dastar Corp. v. Twentieth Century Fox Film Corp. 123 S.Ct. 2041, 2046 (2003). A Lanham Act claim based on Defendants' alleged failure to give Plaintiff proper credit as author and/or producer, however, is foreclosed by Dastar. See Williams v. UMG Recordings. Inc., ___ F. Supp.2d ___, 2003 WL 22129505 (C.D. Cal. Aug. 11, 2003) (failure to credit film narrator and director not actionable under the Lanham Act). In Dastar Corp., the Supreme Court held that "the phrase 'origin in goods' is . . . incapable of connoting the person or entity that originated the ideas or communications that 'goods' embody or contain." Dastar. 123 S.Ct. at 2047. The Court believed that to hold otherwise and afford "special treatment to communicative products [such as a book or video]. . . causes the Lanham Act to conflict with the law of copyright, which addresses that subject specifically." id, at 2048. Thus, in the somewhat analogous factual situation presented in theDastar case, the Supreme Court stated that
Assuming for the sake of argument that Dastards representation of itself as the "Producer" of its videos amounted to a representation that it originated the creative work conveyed by the videos, allowing a cause of action under § 43(a) for that representation would create a species of mutant copyright law that limits the public's federal right to copy and to use expired copyrights. . . . We do not think the Lanham Act requires [a] search for the source of the Nile and all its tributaries. . . . Another practical difficulty of adopting a special definition of "origin" for communicative products is that it places the manufacturers of those products in a difficult position. On the one hand, they would face Lanham Act liability for failing to credit the creator of a work on which their lawful copies are based; and on the other hand they could face Lanham Act liability for crediting the creator if that should be regarded as implying the creator's "sponsorship or approval" of the copy. . . . In sum . . . we conclude that the phrase ["origin in goods" as used in the Lanham Act] refers to the producer of tangible goods that are offered for sale, and not to the author of any idea, concept, or communication embodied in those goods. To hold otherwise would be akin to finding that § 43(a) created a species of perpetual patent and copyright, which Congress may not do.id. at 2048-50 (internal quotations and citation omitted); see also Williams. ___ F. Supp.2d at ___ ("[T]he Supreme Court in Dastar was concerned with a claim materially identical to Plaintiffs claim here. The claim was that Dastar had made false or misleading representations on its own goods . . . — just as Plaintiff here claims that Defendants made false or misleading representations on Defendants' own goods. . . . The "goods" are the defendants', not the plaintiff's. Dastar makes clear that a claim that a defendant's failure to credit the plaintiff on the defendant's goods is actionable only where the defendant literally repackages the plaintiffs goods and sells them as the defendant's own-not where, as here, Defendants are accused only of failing to identify someone who contributed not goods, but ideas or communications (or, for that matter, "services") to Defendants' product."). Thus, the Supreme Court left the protection to the creative talent behind communicative products to the copyright laws. Dastar. 123 S.Ct. at 2050. Accordingly, a Lanham Act claim based upon the failure to attribute proper credit must be dismissed.
V. CONCLUSION
For the foregoing reasons, Defendants' motion to dismiss is GRANTED IN PART AND DENIED IN PART. Defendants' motion is GRANTED INSOFAR AS:
1. the Complaint is DISMISSED AS TO DEFENDANTS BRIAN KAHN AND THE SONOMA SOCIETY IN ITS ENTIRETY for lack of personal jurisdiction;
2. the First Cause of Action alleging copyright infringement is DISMISSED IN ITS ENTIRETY AS TO ALL REMAINING DEFENDANTS; and
3. the Lanham Act claim is DISMISSED insofar as it is based on the failure to give Plaintiff credit as an author or producer of the film. Plaintiff shall inform the Court and Defendants within ten days of the date of this Order whether he intends to pursue a Lanham Act claim on the ground that Defendants repackaged Plaintiff's product as their own. If Plaintiff is not pursuing a valid "repackaging" claim, then Plaintiff shall, within ten days of the date of this order, serve and file a statement not to exceed ten pages providing a basis for this Court's continuing subject matter jurisdiction. Defendants shall be permitted to file a responsive jurisdictional statement not to exceed ten pages within fourteen days after Plaintiff serves and files his jurisdictional statement.
4. In all other respects, Defendants' motion is DENIED.
If the Lanham Act claim is disposed of in its entirety, there will no longer be federal question jurisdiction. Although the parties appear to be diverse, there is some question whether the statutory amount in controversy is satisfied here.
Finally, the Court notes that, in his opposition brief, Plaintiff requests leave to file an amended complaint asserting a claim of quantum meruit. This request must be denied because Plaintiff failed to comply with the requirements of N.D.N.Y. L.R. 7.1(a)(4) regarding motions for leave to file an amended complaint. The Court notes, however, that Fed.R.Civ.P. 15(a) permits amendments "by leave of court or bv written consent of the adverse party." In light of the fact that leave to file amendments is to be freely given and that it appears that such a claim would be justified, the Court urges Defendants to consider consenting to the addition of such a claim thereby obviating needless additional motion practice in this case.
It appears beyond dispute that Plaintiff performed work on the film for Defendants, but was never compensated.
IT IS SO ORDERED.