Opinion
97 Civ. 1351 (SAS)
December 26, 2001
John C. Boyle, Edison, New Jersey, Plaintiff (Pro Se).
Barbara Moses, Esq., Michael B. Carlinsky, Esq., Lara M. Krieger, Esq., Orrick, Herrington Sutcliffe LLP, New York, New York, For Defendants.
MEMORANDUM OPINION AND ORDER
On six previous occasions, Mr. Boyle has failed to receive a favorable ruling in this case. In this, his seventh attempt, he seeks for a second time to reopen his case based on his understanding of Rule 60(b). He claims that he is moving under both Rule 60(b)(2) ("newly discovered evidence which by due diligence could not have been discovered in time to move for a new trial under Rule 59(b)") and Rule 60(b)(3) ("fraud, misrepresentation, or other misconduct of an adverse party").
I. Procedural History
A brief procedural history of this case is warranted before turning to the latest motion. On May 27, 1997, plaintiff filed an Amended Complaint alleging violations of the Copyright Act, misappropriation of trade secrets, unjust enrichment, breach of contract and fraudulent concealment. These claims arose from defendants' alleged infringement of plaintiff's copyright in the description of certain mutual funds. Specifically, plaintiff claimed that defendants' LifePath Prospectus constituted a knowing and unlawful copying of plaintiff's proposal for an asset allocation mutual fund tied to an investor's retirement goals. This proposal was set forth in an Executive Summary which plaintiff sent to various money managers around the United States, including defendants.
In an Opinion dated August 26, 1997, I dismissed plaintiff's claims pursuant to Fed.R.Civ.P. 12(b)(6) with leave to amend the copyright infringement and breach of contract claims. See Boyle v. Stephens, Inc., 97 Civ. 1351, 1997 WL 529006 (S.D.N.Y. Aug. 26, 1997) ("Boyle I"). After plaintiff filed a Second Amended Complaint, defendants again moved for dismissal. I originally denied their motion in its entirety. See Boyle v. Stephens, Inc., 97 Civ. 1351, 1997 WL 760498 (S.D.N.Y. Dec. 9, 1997) ("Boyle II"). After defendants moved for reconsideration I dismissed plaintiff's copyright infringement claim. See Boyle v. Stephens, Inc., 97 Civ. 1351, 1998 WL 80175 (S.D.N.Y Feb. 25, 1998) ("Boyle III"). On September 29, 1998, dismissed plaintiff's unjust enrichment and breach of contract claims on summary judgment pursuant to Fed.R.Civ.P. 56(c). Plaintiff filed an Amended Notice of Appeal in August of 1999, at which time a certified copy of the docket was sent to the Court of Appeals. On October 24, 2001, the Second Circuit affirmed this Court in all respects in a summary order. See Boyle v. Stephens, No. 98-9444, 2001 WL 1313784 (2d Cir. Oct. 24, 2001).
Plaintiff now moves, once again, under Rule 60(b)(2) and (3) to "reopen [the] case based on material misrepresentation and certified evidence of fraud by defendants." This latest motion, dated November 28, 2001, is brought 33 months after the entry of judgment for defendants. Once again, plaintiff seeks to vacate the judgment dismissing his copyright infringement claim on the ground that defendants previously represented that they did not file for trademark protection of certain numbers with the United States Patent and Trademark Office ("PTO") in connection with their LifePath product when in fact they did. As an exhibit to his motion, Plaintiff now submits, for the first time, certified copies of four trademark applications which he claims definitively reveal that defendants did seek to register as their trademarks the numbers "2000, 2010, 2020, 2030, and 2040", something they had consistently denied. For the following reasons, plaintiff's motion is again denied.
The four trademark applications were all filed on August 19, 1993. The applications are described as "LIFEPATH 2010 Service Mark Application" "LIFEPATH 2020 Service Mark Application" "LIFEPATH 2030 Service Mark Application" and "LIFEPATH 2040 Service Mark Application" respectively. A one-page drawing is attached to each application and bears the following words: Centered, in large letters "WFNIA LifePath Funds"; below that, in very small print "LifePath, LifePath 2000, LifePath 2010, LifePath 2020, LifePath 2030, LifePath 2040, and LifePath Reserve; and 2000, 2010, 2020, 2030, and 2040 are trademarks of Wells Fargo Nikko Investment Advisors"; below that in small bold letters "Wells Fargo Nikko Investment Advisors" and "Wells Fargo Institutional Trust Company".
II. Discussion
A. Jurisdiction to Decide Rule 60(b) Motion
The Circuit has affirmed this Court's prior order in its entirety, but plaintiff states in his current motion that he is seeking a rehearing. "While the federal rules do permit the district court to `relieve a party or a party's legal representative from a final judgment,' see Fed.R.Civ. p. 60(b), this circuit has repeatedly held that the docketing of a notice of appeal `ousts the district court of jurisdiction except insofar as it is reserved to it explicitly by statute or rule.'" Toliver v. County of Sullivan, 957 F.2d 47, 49 (2d Cir. 1992) (quoting Ryan v. United States Lines Co., 303 F.2d 430, 434 (2d Cir. 1962)). Accordingly, "[n]o court permits the district court to grant a Rule 60(b) motion while the case is on appeal." Boyko v. Anderson, 185 F.3d 672, 675 (7th Cir. 1999). However, the Second Circuit has "recently recognized the power of a district court to deny a Rule 60(b) motion after the filing of a notice of appeal from the judgment sought to be modified." Hyle v. Doctor's Assocs., Inc., 198 F.3d 368, 372 n. 2 (2d Cir. 1999). Thus, this Court has jurisdiction to entertain and deny plaintiff's Rule 60(b) motion even when the case remains in the appellate court. See Smalls v. Batista, 191 F.3d 272, 276 n. 3 (2d Cir. 1999) (citing Toliver, 957 F.2d at 49).
B. Rule 60(b) Motion
As this Court noted in an earlier opinion in this case, Rule 60(b)(2) and (3) require that the motion be brought within one year of the time the judgment is entered, except the rule does "not limit the power of a court . . . to set aside a judgment for fraud upon the court." Fed.R.Civ.P. 60(b) Plaintiff's Rule 60 motion is untimely unless he can prove that defendants engaged in a fraud upon the court which is "limited to fraud which seriously affects the integrity of the normal process of adjudication." Gleason v. Jandrucko, 860 F.2d 556, 559 (2d Cir. 1988). As stated by the Court of Appeals, fraud upon the court embraces "that species of fraud which does or attempts to, defile the court itself, or is a fraud perpetrated by officers of the court so that the judicial machinery cannot perform in the usual manner its impartial task of adjudging cases presented for adjudication." Kupferman v. Consolidated Research Mfg. Corp., 459 F.2d 1072, 1078 (2d Cir. 1972) (citation omitted). In addition, "an aggrieved party seeking relief under the saving clause of Rule 60(b) still must be able to show that there was no `opportunity to have the ground now relied upon to set aside the judgment fully litigated in the original action.'" Gleason, 860 F.2d at 560 (quoting Serzysko v. Chase Manhattan Bank, 461 F.2d 699, 702 n. 2 (2d Cir. 1972)).
Here, plaintiff has had eight years to bring these certified trademark applications before this Court. There is no excuse for doing so late in the year 2001, when this litigation was begun in 1997 and the applications were filed in 1993. Plaintiff appears to accuse the Patent and Trademark Office, rather than defendants, with preventing these applications from being discovered earlier:
Plaintiff was continuously obstructed by the Trademark office to segregate what registration numbers represented the correct file(s). Indeed, the United States government took the position in Claims Court that only LifePath 2000 was registered — a clear misrepresentation. . . . After the date of Hearing by the Appeals Court, Trademark office finally admitted to Plaintiff the correct registration numbers, and Plaintiff was able to obtain certified copies of the LifePath file that shows conclusively that such registration was indeed a fact.
11/28/01 Motion at 2. If there were any truth to this allegation, it would clearly not amount to fraud by an adverse party. Furthermore, plaintiff appears to misread the trademark applications. While each attaches a drawing containing the words "2000, 2010, 2020, 2030, and 2040 are trademarks of Wells Fargo Nikko Investment Advisors" nowhere do defendants claim they have registered these trademarks. Rather, the registrations are for the service marks "LIFEPATH 2010" "LIFEPATH 2020" "LIFEPATH 2030" and "LIFEPATH 2040". Finally, if defendants hid these applications from plaintiff, that would not amount to a fraud on this Court. Gleason, 860 F.2d at 560 ("[N]either perjury nor nondisclosure, by itself, amounts to anything more than fraud involving injury to a single litigant.")
In response to my Order of March 17, 2000, defendants submitted a Supplemental Memorandum of Law in Opposition to Motion of Plaintiff Pursuant; to Fed.R.Civ.P. 60(b) ("Supp. Memo") wherein they stated that this Court never asked them whether they had filed for trademark protection for the numbers 2000, 2010, 2020 and so on. See Supp. Memo at 2. The question did not arise at the May 30, 1997 or December 29, 1997 conferences attended by defendants' attorneys Michael B. Carlinsky and/or Barbara Moses. See Declarations of Michael B. Carlinsky and Barbara Moses, sworn to March 24, 2000, ¶ 2 ("Carlinsky Decl." and "Moses Decl."). Nor did the question arise at the conference held on June 19, 1998. See Transcript of June 19, 1998 Conference. Furthermore, in response to plaintiff's First Request for Admissions, defendants denied that they filed for trademark protection of the numbers 2000, 2010, 2020, 2030, and 2040 in connection with the marketing of mutual funds. See Moses Decl. ¶ 3.
Defendants did concede, however, that they filed for trademark protection for the following marks: "LIFEPATH 2000," "LIFEPATH 2010," "LIFEPATH 2020," and so on through "LIFEPATH 2100," and obtained service mark registrations for the first five marks in the series. See id. ¶ 4. These filings are matters of public record and plaintiff has known of them since at least May 1997, when he attached copies of the "LIFEPATH 2000" filings to his Amended Complaint. See Supp. Memo at 2. Defendants denied having ever filed for trademark or service mark protection for the numbers "2000," "2010," "2020," and so on. Id. The evidence now submitted by plaintiff fails to prove that any of these statements are false. Indeed, there is still no proof that defendants ever filed for trademark protection for the terms "2010, 2020, 2030 or 2040." Because there is no merit to plaintiff's allegation that defendants perpetrated a fraud upon this Court by denying that they had filed for protection of those numbers, plaintiff's Rule 60(b) motion is again denied.
Denial of plaintiff's motion does not alter the judgment under appeal and therefore does not "interfere with or threaten to duplicate the appellate proceedings." Boyko, 185 F.3d at 675.
III. Conclusion
For the reasons stated above, plaintiff's motion to "reopen the case" under Rule 60(b) is denied. The Clerk of the Court is directed to close this motion.