Opinion
No-06 Civ. 6570 (RJS).
September 10, 2008
Plaintiff Ralph Muniz is represented by, Esteban A. Rockett, Esq., Woodbridge, New Jersey.
Defendant Erick Morillo is represented by Robert Meloni. Esq., Meloni McCaffrey, P.C., New York, New York.
MEMORANDUM AND ORDER
Plaintiff Ralph Muniz filed this action on August 31, 2006 against Erick Morillo, asserting copyright infringement, trademark infringement, and state-law claims, arising out of Morillo's distribution of the song "I Like to Move It" and use of the mark "REEL 2 REAL." In addition to compensatory and punitive damages, Muniz seeks a permanent injunction barring Morillo from using "I Like to Move It" and the "REEL 2 REAL" mark, and from taking any act likely to cause public confusion as to the source of "I Like to Move It."
Currently before the Court is Defendant's motion for judgment on the pleadings pursuant to Federal Rule of Civil Procedure 12(c). For the reasons set forth below, the motion is granted and all claims are dismissed without prejudice.
I. BACKGROUND A. Facts
The following facts are taken from Plaintiff's Amended Complaint and accepted as true for the purpose of deciding this motion. See Doe v. City of New York, 15 F.3d 264, 266 (2d Cir. 1994).
Beginning in 1991, Ralph Muniz created several musical works in the form of percussion sequences, including a sequence entitled "Per-C." (Am. Compl. ¶ 10.) He created these works primarily on a piece of equipment called an EMU SP1200. ( Id. ¶ 15). Because Muniz did not own an SP1200, he used friends' SP1200 units to create "sound kits" and sequences for musical compositions, which he saved to 3.5-inch floppy discs. ( Id. ¶¶ 24-25.) Muniz used an SP1200 owned by Defendant Morillo to create some of these sequences, but he maintains that Morillo did not assist him in creating "Per-C." ( Id. ¶ 29.)
During the same time period, Morillo created several independent musical works, typically consisting of melodies and lyrics. ( Id. ¶¶ 30, 32.) Morillo and Muniz later combined some of their individual works into "comprehensive pieces," ultimately coauthoring three such songs: "The New Anthem," "Go On Move," and "Do Me." ( Id. ¶¶ 35, 36, 40, 46, 52.)
Muniz alleges that he authorized Morillo to use the "Per-C" percussion sequence "alongside Muniz" and solely for the creation of "Do Me." ( Id. ¶ 50.) Muniz also asserts that he never transferred any other rights, interests, or intellectual property, in "Per-C" or any of his other works, to Morillo or any third party. ( Id.)
After the three songs were completed, Plaintiff alleges that he "had difficulty contacting Morillo" and was "never permitted back to Morrillo['s] home studio." ( Id. ¶¶ 53-54.) As a consequence, Muniz was unable to obtain his floppy disc containing the "Per-C" percussion sequence. ( Id. ¶ 56.) Morillo later informed Muniz that he, Morillo, had created another song titled "I Like to Move It" using Muniz's "Per-C" sequence. ( Id. ¶¶ 56-57.) Muniz asserts that he never gave Morillo permission to use "Per-C" in that manner, and that "I Like to Move It" is therefore an "unlawful derivative work." ( Id. ¶ 58, 82.)
Morillo reproduced and distributed recordings of "I Like to Move It" in coordination with Mark Finklestein, who was then the Chief Executive Officer of Strictly Rhythm Records. ( Id. ¶ 61.) "I Like to Move It" is registered as a copyright under U.S. Registration No. SR-183-588, but Muniz's name does not appear in the copyright registration. ( Id. ¶¶ 72-73.)
After sales of "I Like to Move It" began to increase, Morillo and Finklestein approached Muniz to acquire his rights in "Per-C." ( Id. ¶¶ 63-64.) Morillo and Finklestein told Muniz that he possessed no intellectual property rights or commercial interest in "I Like to Move It." ( Id. ¶ 64.) They also stated that any rights Muniz may have possessed in the song had been transferred to a publishing company known as Platinum Productions. ( Id.)
Muniz alleges further that, beginning in approximately 1991, he "created the mark 'REEL 2 REAL', to be used as the new trademark for future derivative works . . . created by Muniz and Morillo's collaborative efforts." ( Id. ¶ 80.) According to Plaintiff, "'REEL 2 REAL' has been, and continues to be, used to identify the source" of "The New Anthem" and "Go On Move," both of which were coauthored by Muniz and Morillo. ( Id. ¶¶ 81-83.) Muniz alleges further — with notable tension between this claim and his assertion that "I Like to Move It" is an unlawful derivative of "Per-C" — that the "REEL 2 REAL" mark is being improperly used to indicate that "I Like to Move It" was coauthored by Muniz and Morillo. ( See id. ¶ 56, 83.)
According to Muniz, Morillo has generated several million dollars in income from the reproduction, distribution, sale, and licensing of "I Like to Move It." ( Id. ¶ 79.) Muniz alleges that Defendant's actions have caused damage to his business, goodwill, reputation, and profits. ( Id. ¶ 101.)
B. Procedural History
Muniz filed the Complaint in this action on August 31, 2006, followed by an Amended Complaint on December 1, 2006. He alleges: (1) copyright infringement under 17 U.S.C. § 501(a) based on Defendant's use of the "Per C" percussion sequence in creating the derivative work "I Like to Move It" (Am. Compl. ¶ 95-97); (2) trademark infringement under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), based on Defendant's use of the "REEL 2 REAL" mark ( id. ¶ 98-102); (3) fraudulent business practices and deceptive representations in violation of New York General Business Law §§ 349 and 350 ( id. ¶¶ 103-106); and (4) misappropriation of Plaintiff's reputation under New York common law ( id. ¶ 108-109). Muniz seeks compensatory and punitive damages, as well as a permanent injunction barring Defendant's use and distribution of the song "I Like to Move It" and the "REEL 2 REAL" mark.
The case was originally assigned to the Honorable Kenneth M. Karas, District Judge, and was reassigned to the undersigned on September 4, 2007.
On July 20, 2007, Defendant filed this motion to dismiss the Amended Complaint with prejudice pursuant to Rule 12(c).
II. DISCUSSION A. Standard of Review
"The standard for addressing a Rule 12(c) motion for judgment on the pleadings is the same as that for a Rule 12(b)(6) motion to dismiss for failure to state a claim." Cleveland v. Caplaw Enters., 448 F.3d 518, 521 (2d Cir. 2006). The "[f]actual allegations" contained in the complaint "must be enough to raise a right to relief above the speculative level." Bell Atlantic Corp. v. Twombly, 127 S. Ct. 1955, 1965 (2007). Therefore, the complaint must satisfy "a flexible 'plausibility standard,' which obliges a pleader to amplify a claim with some factual allegations in those contexts where such amplification is needed to render the claim plausible." Iqbal v. Hasty, 490 F.3d 143, 157-58 (2d Cir. 2007) (internal citation omitted); see also Ruotolo v. City of New York, 514 F.3d 184, 188 (2d Cir. 2008) (citing Twombly).
In considering a motion under Rule 12(c), the court's "consideration is limited to facts stated on the face of the complaint, in documents appended to the complaint, or incorporated in the complaint by reference, and to matters of which judicial notice may be taken." Allen v. WestPoint-Pepperell, Inc., 945 F.2d 40, 44 (2d Cir. 1991). Plaintiff must provide "more than labels and conclusions, and a formulaic recitation of the elements of a cause of action will not do." Twombly, 127 S. Ct. at 1964-65 (citations omitted).
B. Copyright Infringement
Defendant argues that this Court lacks subject matter jurisdiction to hear Plaintiff's copyright infringement claim relating to "I Like to Move It" because Plaintiff's application for copyright registration has not yet been approved or rejected by the U.S. Copyright Office. (Def.'s Mem. at 10-11.) The Court concurs, and concludes that it lacks jurisdiction to hear the claim under 17 U.S.C. § 411. Accordingly, the Court dismisses Plaintiff's copyright infringement claim without prejudice.
1. Legal Standard
"The party invoking federal jurisdiction bears the burden of establishing" that jurisdiction exists. Lujan v. Defenders of Wildlife, 504 U.S. 555, 561 (1992). Each factual issue necessary to support subject matter jurisdiction "must be supported in the same way as any other matter on which the plaintiff bears the burden of proof, i.e., with the manner and degree of evidence required at the successive stages of the litigation." Id.
The relevant jurisdictional provision of the Copyright Act is 17 U.S.C. § 411(a), which states that a copyright infringement claim may not be commenced until either "registration of the copyright claim has been made in accordance with this title" or "the deposit, application, and fee required for the registration have been delivered to the Copyright Office in proper form and registration has been refused." 17 U.S.C. § 411(a); see also In re Literary Works in Electronic Databases Copyright Litig., 509 F.3d 116, 121, 124 n. 6 (2d Cir. 2007) (discussing subject matter jurisdiction under the Copyright Act).
Consequently, a district court does not have subject matter jurisdiction over an infringement claim until the Copyright Office either issues a certificate of registration or rejects the application. See id.; Whimsicality, Inc. v. Rubie's Costume Co., Inc., 891 F.2d 452, 455 (2d Cir. 1989) ("[P]roper registration is a prerequisite to an action for infringement."); Corbis Corp. v. UGO Networks, Inc., 322 F. Supp. 2d 520, 521 (S.D.N.Y. 2004); Tuff-N-Rumble Mgmt., Inc. v. Sugarhill Music Publ'g Inc., 49 F. Supp. 2d 673, 677 (S.D.N.Y. 1999) ("[D]istrict courts are without subject matter jurisdiction to hear claims for federal copyright infringement unless a party asserts in its pleadings that he has received an actual certificate of registration or its denial from the Copyright Office."); Noble v. Town Sports Int'l, Inc., No. 96 CIV. 4257 (JFK), 1998 WL 43127, at *1 (S.D.N.Y. Feb. 2, 1998); National Ass'n of Freelance Photographers v. Associated Press, No. 97 Civ. 2267 (DLC), 1997 WL 759456, at *12 (S.D.N.Y. Dec. 10, 1997).
2. Analysis
Plaintiff asserts that Defendant's "bad acts" — namely, "inappropriately taking possession of Plaintiff's media" — are the reason for the delay in filing the copyright application. (Pl.'s Mem. at 9-10). Nonetheless, Plaintiff concedes that his claim is subject to an "obligation of actual registration," and that he failed to obtain a registered copyright before commencing this action. ( Id. at 9). In response to Defendant's argument, Plaintiff argues that the Court has "flexibility" to grant an extension of time to meet the jurisdictional requirement before dismissing his claim. ( Id. at 9-10).
The sole case upon which Plaintiff relies for the proposition that "strict adherence to 17 U.S.C. § 411 has not been the uniform practice of all courts in this district" is inapposite. (See id. at 9 (citing Shady Records, Inc. v. Source Enterprises, Inc., 03 Civ. 9944 (GEL), 2005 WL 14920 (S.D.N.Y. Jan. 3, 2005)). In Shady Records, the Copyright Office had issued registration decisions before the action was initiated. 2005 WL 14920, at *8. There, the defendant argued that the court lacked subject matter jurisdiction because the validity of those copyright registrations was contested. Id. The court rejected that argument and found that it had subject matter jurisdiction to adjudicate the claim. Id. Thus, Shady Records is entirely distinguishable from the instant case, where no registration has been issued at all. Moreover, to the extent there is language in Shady Records suggesting flexibility in the requirements of 17 U.S.C. § 411, it is dicta based on authority from outside this Circuit.
Plaintiff also cites Salerno v. City Univ. Of N.Y., 191 F. Supp. 2d 352 (S.D.N.Y. 2001), without elaboration, in support of his argument that the subject matter jurisdiction requirements of the Copyright Act are flexible. (Pl.'s Mem. at 10) In Salerno, plaintiff brought a copyright infringement claim based on the use of two documentaries. 191 F. Supp. 2d at 354. Although neither of the documentaries was registered, the plaintiff alleged that both works incorporated parts of earlier works to which she held copyrights. Id. The court found that it had subject matter jurisdiction to hear the claim because the plaintiff alleged that she had a valid copyright relating to materials that were incorporated into the final work. Id. at 356. In contrast, Plaintiff's Amended Complaint lacks allegations relating to possession of any registered copyright; indeed, Plaintiff concedes in his response to Defendant's motion that no such registration exists. Thus, Salerno is distinguishable from the instant case.
Finally, Plaintiff cites no authority, and the Court is aware of none, to support the assertion that a defendant's "bad acts" should suspend the registration requirement for jurisdiction to bring a claim under the Copyright Act. Put simply, the Court has no authority to ignore the statutory requirements prescribed by Section 411. Therefore, consistent with the weight of the authority in this jurisdiction, the Court finds that it lacks subject matter jurisdiction over Plaintiff's copyright infringement claim because, as Plaintiff concedes, no copyright registration has been issued to Plaintiff for "Per-C" or "I Like to Move It." Accordingly, Plaintiff's copyright claim is dismissed without prejudice.
C. Trademark Claim
Defendant next argues that Plaintiff has failed to state a claim for trademark infringement. (Def.'s Mem. at 16.) The Court concludes that the Amended Complaint does not plead ownership over a protectable mark because there is no allegation of actual use of the mark by Plaintiff, which is an element of a claim under section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). Accordingly, Plaintiff's trademark claim is likewise dismissed without prejudice.
1. Legal Standard
Section 43(a) of the Lanham Act "protects against false designation of origin and false description or representation, whether or not a registered trademark is involved." Thompson Medical Co., Inc. v. Pfizer Inc., 753 F.2d 208, 212 (2d Cir. 1985); see also Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 32 (2003) ("Section 43(a) of the Lanham Act prohibits actions like trademark infringement that deceive consumers and impair a producer's goodwill."). To prevail on a claim of trademark infringement under the Lanham Act, "the plaintiff must show, first, that its mark merits protection, and second, that the defendant's use of a similar mark is likely to cause consumer confusion" as to the origin, sponsorship, or affiliation of the defendant's goods. Brennan's, Inc. v. Brennan's Restaurant, L.L.C., 360 F.3d 125, 129-30 (2d Cir. 2004) (quoting Gruner + Jahr USA Publ'g v. Meredith Corp., 991 F.2d 1072, 1075 (2d Cir. 1993)); see also ITC Ltd. v. Punchgini, Inc., 482 F.3d 135, 154 (2d Cir. 2007) ("[P]laintiff must demonstrate its own right to use the mark . . . in question.")
In order to show that the mark "merits protection," the plaintiff must establish ownership of, or a superior right to use, the mark in question. See P. Daussa Corp. v. Sutton Cosmetics (P.R.) Inc., 462 F.2d 134, 136 (2d Cir. 1972) ("To be entitled to relief . . . [plaintiff] must show not only confusing similarity, but priority of right over [defendant] to the use of the mark."); Artisan Mfg. Corp. v. All Granite Marble Corp., 559 F. Supp. 2d 442, 449 (S.D.N.Y. 2008). Ownership of a trademark requires more than just being the first to invent or register a particular mark; the party claiming trademark rights must have been the first to actually use the mark in the sale of goods or services. ITC Ltd., 482 F.3d at 147 ("[S]o long as a person is the first to use a particular mark to identify his goods or services in a given market, and so long as that owner continues to make use of the mark, he is 'entitled to prevent others from using the mark to describe their own goods' in that market." (quoting Defiance Button Mach. Co. v. C C Metal Prods. Corp., 759 F.2d 1053, 1059 (2d Cir. 1985)). This trademark infringement analysis is applicable to both registered marks (under 15 U.S.C. § 1114) and unregistered marks acquired by use (under 15 U.S.C. § 1125(a)). Virgin Enters. Ltd. v. Nawab, 335 F.3d 141, 146 (2d Cir. 2003).
2. Analysis
Defendant argues that Muniz has failed to adequately plead trademark infringement because he has not alleged that he ever actually used the "REEL 2 REAL" mark. (Def.'s Mem. at 16). The Court agrees. Muniz alleges that he " created the mark 'REEL 2 REAL' to be used as the new trademark for songs created by Muniz and Morillo's collaborative efforts," (Am. Compl. ¶ 80 (emphasis added)), but he fails to allege that he ever actually used the mark. Similarly, although Plaintiff alleges that the mark "has been, and continues to be, used" to identify the source of certain works (see id. ¶¶ 81-82), there is no allegation that Muniz was the person using it. To the contrary, the Amended Complaint focuses almost exclusively on allegations relating to the use of the mark by Defendant Morillo. ( See id. ¶¶ 84, 88, 92-93).
Plaintiff asserts in his Memorandum of Law that the "REEL 2 REAL" mark was "first used by Plaintiff when Plaintiff released the phonorecord 'The New Anthem.'" (Pl.'s Mem. at 14). In support of that assertion, however, Plaintiff first cites to an exhibit attached to a declaration submitted in connection with his motion papers. This is insufficient in the context of a Rule 12(c) motion because "[i]t is axiomatic that the Complaint cannot be amended by briefs in opposition to a motion to dismiss." O'Brien v. Nat'l Prop. Analyst Partners. 719 F. Supp. 222, 229 (S.D.N.Y. 1989). Plaintiff also cites to paragraph 37 of the Amended Complaint in further support of his argument that he used the "REEL 2 REAL" mark, but the paragraph contains no reference to use of the mark.
In sum. Plaintiff fails to point to any allegations in the Amended Complaint relating to his personal use of the "REAL 2 REAL" mark, and the Court finds none. Therefore, because the Amended Complaint fails to adequately allege Plaintiff's ownership in a legally protectable mark, a threshold requirement for his cause of action, the trademark infringement claim is dismissed without prejudice.
D. State Law Claims
Remaining are Plaintiff's Third and Fourth Causes of Action, pled under New York State General Business Law sections 349 and 350 and "New York common law," respectively. (Am. Compl. ¶¶ 103-10.) Because Plaintiff has not relied on diversity jurisdiction in the Amended Complaint, the Court may decide these state-law claims only if there is supplemental jurisdiction. See 28 U.S.C. § 1367(c)(3). Given the dismissal of Plaintiff's federal copyright and trademark claims, the Court declines to exercise supplemental jurisdiction over these remaining claims. See Carnegie-Mellon Univ, v. Cohill, 484 U.S. 343, 350 n. 7 (1988) ("[I]n the usual case in which all federal-law claims are eliminated before trial, the balance of factors . . . will point toward declining to exercise jurisdiction over the remaining state-law claims"); United Mine Workers v. Gibbs, 383 U.S. 715, 726 (1966) ("[I]f the federal law claims are dismissed before trial . . . the state claims should be dismissed as well"). Accordingly, Plaintiff's state law claims are dismissed.
III. CONCLUSION
Defendant's motion for judgment on the pleadings is hereby GRANTED. Plaintiff's copyright claim is dismissed without prejudice for lack of subject matter jurisdiction. Plaintiff's trademark claim is dismissed without prejudice for failure to state a claim. Plaintiff's remaining state law claims are dismissed for lack of supplemental jurisdiction. The Clerk of the Court is respectfully directed to terminate the motion docketed as document number 12.
SO ORDERED.