Opinion
No. 02 Civ. 4630 (CBM)
November 3, 2003
MEMORANDUM OPINION AND ORDER
Defendant Fross Zelnick Lehrman Zissu, P.C. ("Fross Zelnick") moves for judgment on the pleadings, pursuant to Rule 12(c) of the Federal Rules of Civil Procedure. Defendant's motion is granted.
I. BACKGROUND
Plaintiff in this case, Agatha Brown ("Brown"), is a fashion designer. She alleges that defendants Michel Quiniou ("Quiniou") and the companies he owns, Agatha Diffusion S.r.L. ("Diffusion") and Sixteen, Inc. ("Sixteen") (collectively, "Quiniou et al."), have infringed upon her trademark in the registered mark "AGATHA." The complaint also names as defendant Fross Zelnick Lehrman Zissu, P.C. ("Fross Zelnick"), a law firm that provided Brown with representation until November 1987, and that shortly thereafter began to represent defendants Quiniou et al. The complaint's nine causes of action sound under the Federal Trademark Act, the Lanham Act, and New York law. Plaintiff seeks monetary damages, as well as injunctive and declaratory relief.
II. PROCEDURAL HISTORY AND PRESENT STATUS OF THE CASE
In an opinion dated April 16, 2003, this court denied a motion by Quiniou et al. to dismiss seven of the nine causes of action pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure, on the basis of res judicata. Brown v. Quiniou, 2003 WL 1888743 (S.D.N.Y. 2003).
In an order dated April 22, 2003, this court granted Sixteen's motion to dismiss the sixth and ninth causes of action for failure to state a claim as to Sixteen.
In an opinion dated May 23, 2003, this court granted Diffusion's motion to dismiss pursuant to Rule 12(b)(5) of the Federal Rules of Civil Procedure, for insufficient service of process, and Quiniou's motion to dismiss pursuant to Rule 12(b)(5), for plaintiffs failure serve process. Brown v. Quiniou, 2003 WL 21218976 (S.D.N.Y. 2003). Thus, only Sixteen and Fross Zelnick remain as defendants.
On May.23, 2003, defendant Fross Zelnick filed a motion for judgment on the pleadings, pursuant to Rule 12(c) of the Federal Rules of Civil Procedure. For the reasons contained herein, the motion is hereby granted.
III. JUDGMENT ON THE PLEADINGS, PURSUANT TO RULE 12(c)
Standard for Granting Judgment on the Pleadings
The standard for granting or denying a motion for judgment on the pleadings is the same as that applicable to a motion to dismiss a claim under Rule 12(b)(6). U.S. v. Weisz, 914 F. Supp. 1050, 1052 (S.D.N.Y. 1996).Thus, a court deciding such a motion must accept the allegations contained in the complaint as true, and draw all reasonable inferences in favor of the non-movant; it should not dismiss the complaint "unless it appears beyond doubt that the plaintiff can prove no set of facts in support of his claim which would entitle him to relief."Sheppard v. Beerman, 18 F.3d 147, 150 (2d Cir. 1994) (quoting Ad-Hoc Comm. of Baruch Black and Hispanic Alumni Ass'n v. Bernard M. Baruch College. 835 F.2d 980, 982 (2d Cir. 1987)) (internal citations omitted). Plaintiffs Causes of Action
In none of the nine causes of action is Fross Zelnick specifically mentioned by name. Indeed, five of them are pled against defendant "Diffusion" only. Each of the remaining four causes of action is pled against unspecified "Defendants," but none of them could entitle plaintiff to relief against Fross Zelnick. The nine causes of action will be considered in order. First Cause of Action
The complaint misnumbers the causes of action, stating no "third" cause of action and two "ninth" causes of action.
The first cause of action alleges trademark infringement, in violation of the Federal Trademark Act, 15 U.S.C. § 1114(1)(a) and 1125(a).
15 U.S.C. § 1114(1)(a) provides for the civil liability of:
(1) Any person who shall, without the consent of the registrant —
(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake or to deceive . . .
15 U.S.C. § 1125(1)(a) provides for the civil liability of:
(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which — (A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person . . .
A claim that rests on these provisions requires a showing that a defendant has used a certain mark or other item "in commerce," and, indeed, plaintiff claims that "Defendants have used Plaintiffs marks in commerce and have place [sic] such marks on its goods." Fross Zelnick does not have "goods" of the type in question here. Nor has plaintiff persuaded the court that case law would permit a viable claim that Fross Zelnick violated either of these provisions. Thus, this cause of action must be dismissed as regards Fross Zelnick.
Second Cause of Action
The second cause of action alleges false designation of origin and "other violations" of 15 U.S.C. § 1125(a). A claim of false designation of origin under this provision requires a showing that a defendant had, "on or in connection with any goods or services, or any container for goods," used "in commerce any . . . false designation of origin." Again, plaintiff has failed to persuade the court that case law would permit a viable claim of this kind against Fross Zelnick.
Fourth Cause of Action
The fourth cause of action alleges unfair competition, in violation of the Lanham Act, 15 U.S.C. § 1125(a)(1)(A). It is pled only against "Diffusion," which is defined in the complaint's preamble to include only defendants Quiniou et al. Thus, no set of facts would entitle plaintiff to relief against Fross Zelnick on this count.
Fifth Cause of Action
The fifth cause of action alleges false advertising, in violation of the Lanham Act, 15 U.S.C. § 1125(a)(1)(B). Like the fourth cause of action, it is pled only against "Diffusion".
Sixth Cause of Action
The sixth cause of action is entitled "Abandonment/ cancellation," but fails to indicate its legal basis. As a result, there is no set of facts that could support a claim of relief under this count, against Fross Zelnick or any other defendant.
Seventh Cause of Action
The seventh cause of action alleges violations of the New York Civil Rights Law. It is pled only against "Diffusion". Eighth Cause of Action
The eighth cause of action alleges unfair competition under New York law. It is pled only against "Diffusion".
First "Ninth" Cause of Action
The first "ninth" cause of action alleges misappropriation, in violation of "New York common law." It is pled only against "Diffusion".
Second "Ninth" Cause of Action
The second "ninth" cause of action is entitled "Injunction," but fails to indicate its legal basis. As a result, there is no set of facts that could support a claim of relief under this count, against Fross Zelnick or any other defendant.
Thus, of the nine causes of action, only four could possibly be construed as having been pled against Fross Zelnick. Of those four, only two indicate a legal basis on which they can rest. Of those two, both are viable only against a defendant using marks, or designations of origin, in commerce, and plaintiff has failed to persuade the court that either of them could entitle her to relief against Fross Zelnick.
IV. CONCLUSION
Defendant Fross Zelnick's motion for judgment on the pleadings is hereby granted. We order that plaintiff be permitted to move for leave to file an amended complaint on presentation to the court of a proposed amended complaint that is legally sufficient.