Opinion
No. 99 Civ. 4684 (LTS)(THK)
March 29, 2001
OPINION AND ORDER
On March 29, 2001, Magistrate Judge Theodore H. Katz issued a Report and Recommendation ("Report") recommending that defendant's motion to dismiss the complaint in the above-captioned action be granted as to claims accruing earlier than the three years immediately prior to the filing of the complaint and that the motion be granted, with leave to replead in accordance with the Report, with regard to claims for infringement accruing within the three years immediately prior to the filing of the complaint. There were no objections interposed to the Report. The Court has thoroughly reviewed Judge Katz's comprehensive and well-reasoned Report and has determined that there is no clear error on the face of the record. The Court adopts the Report, which is reproduced below, for the reasons stated therein.
On April 27, 2001, the undersigned received in chambers a document denominated "Amended Complaint," from plaintiff Joseph Mahnke, appearingpro se. The document is not accompanied by a certificate of service although it is indicated that a copy was sent to counsel for the defendant. The Amended Complaint appears to be plaintiff's effort to replead in accordance with Judge Katz's Report.
On May 2, 2001, the parties signed a Stipulation of Adjournment granting defendant an extension of time to answer plaintiff's amended complaint. The stipulation was submitted to the Honorable Lewis A. Kaplan, who formerly presided over this matter. Judge Kaplan signed the stipulation, granting the request.
Plaintiff is hereby directed to file the Amended Complaint with a certificate of service within twenty (20) days of the date hereof. In accordance with the Order of Reference to a Magistrate Judge, dated August 2, 2000, Judge Katz supervises all pretrial matters in the case. All communications regarding pretrial matters should therefore be directed to his attention.
THEODORE H. KATZ, UNITED STATES MAGISTRATE JUDGE. TO: THE HON. LAURA T. SWAIN, UNITED STATES DISTRICT JUDGE.
This action was referred to me, pursuant to 28 U.S.C. § 636 (b)(1) (B) and (C), for general pretrial supervision and the resolution of dispositive motions requiring a Report and Recommendation. Pro se plaintiff, Joseph Mahnke, brings this action against defendant Munchkin, Inc., alleging that defendant, through the production of a baby soda bottle, infringed plaintiff's registered copyright in a drawing. Defendant now moves to dismiss this action for failure to state a claim, pursuant to Federal Rule of Civil Procedure 12(b)(6), for a more definite statement, pursuant to Fed.R.Civ.P. 12(e), and to strike irrelevant and immaterial references to patent issues, pursuant to Fed.R.Civ.P. 12(f). For the following reasons, I respectfully recommend that: 1) defendant's motion to dismiss as to infringement claims accruing earlier than the three years immediately prior to the filing of the Complaint, be granted; and 2) defendant's motion to dismiss as to claims, if any, for infringement accruing within the three years immediately prior to the filing of the Complaint, be granted, but with leave to replead consistent with the following recommendations.
BACKGROUND
Joseph Mahnke ("Mahnke"), through his sparse half-page Complaint filed March 23, 1999, ostensibly alleges that Munchkin Product's Inc. ("Munchkin"), beginning in 1993, infringed plaintiff's copyright-protected drawing through the production of a similar product.See Complaint.
On June 29, 1999, then Chief Judge Griesa issued an Order dismissing Mahnke's Complaint for failure to properly allege a copyright infringement claim. See Order to Dismiss, dated June 29, 1999. The Court, in making its determination, found that the Complaint failed to establish proof of copyright ownership, proof of copyright registration certification, and failed to describe the work being infringed in sufficiently specific terms. See id. In response to the Order of Dismissal, Mahnke filed a Notice of Appeal, dated July 23, 1999, that was subsequently dismissed by the Court of Appeals on December 7, 1999. See Court of Appeals Mandate, Mahnke v. Munchkin, 99 Civ. 4684 (LTS), Dkt. #7.
Undeterred, Mahnke, on February 3, 2000, filed a motion to reconsider the June 29 dismissal Order. See Plaintiff's Motion for Reconsideration ("Mot. for Rec."). After consideration of Mahnke's motion, Judge Griesa vacated his previous order and determined that Mahnke had sufficiently supported his claim for copyright infringement by providing the Court with a photocopy of the statutory certificate of copyright registration for Mahnke's work entitled "Toys for Soda Beverage Bottle" (effective date September 3, 1991), copyright registration number VA 219 103 pertaining to the work, and a photocopy of the drawing to which the copyright protection applies. See Mot. for Rec.; Order granting Mot. for Rec., dated March 16, 2000 ("March 16 Order"). In detailing his copyright infringement allegations for the Court, Mahnke alleged that Munchkin's manufacture of a "decorated baby soda bottle," beginning some time in 1993, constituted an infringing copy of his copyright-protected drawing.See Mot. for Rec.; March 16 Order.
Defendant subsequently filed the instant motion seeking to dismiss the Complaint, or in the alternative, for a more definite statement and to strike certain immaterial or impertinent material from the Complaint.See Memorandum of Law in Support of Defendant's Motion to Dismiss Complaint ("Def. Mem.")
DISCUSSION
I. Standards under Rule 12(b)(6)
In deciding a motion to dismiss under Federal Rule of Civil Procedure 12(b)(6), this Court must construe the allegations of the Complaint in the plaintiff's favor. See Scheuer v. Rhodes, 416 U.S. 232, 236, 94 S. Ct. 1683, 1686 (1974); Automated Salvage Transport, Inc. v. Wheelabrator Environmental Systems, Inc., 155 F.3d 59, 67 (2d Cir. 1996); Hernandez v. Coughlin, 18 F.3d 133, 136 (2d Cir. 1994). Dismissal is warranted only where "it appears beyond doubt that the plaintiff can prove no set of facts in support of his claim which would entitle him to relief." Conley v. Gibson, 355 U.S. 41, 45-6, 78 S. Ct. 99, 102 (1957); see also Harris v. City of New York, 186 F.3d 243, 250 (2d Cir. 1999); Automated Salvage, 155 F.3d at 67; Hernandez, 18 F.3d at 136.
Furthermore, "[t]he Supreme Court has long held that courts must construe pro se complaints liberally, applying less stringent standards than when a plaintiff is represented by counsel." Elliot v. Bronson, 872 F.2d 20, 21 (2d Cir. 1989) (per curiam) (citing Hughes v. Rowe, 449 U.S. 5, 9, 101 S. Ct. 173, 175 (1980) and Haines v. Kerner, 404 U.S. 519, 520, 92 S. Ct. 594, 595 (1972) (per curiam)). Accordingly, where the plaintiff is proceeding pro se, the Court must read plaintiff's "supporting papers liberally, and . . . interpret them to raise the strongest arguments that they suggest." Branham v. Meachum, 77 F.3d 626, 628-29 (2d Cir. 1996); see also Burgos v. Hopkins, 14 F.3d 787, 790 (2d Cir. 1994)
II. Copyright Infringement Claim
A. Statute of Limitations
The applicable statutory limitations provision for copyright infringement actions provides in relevant part that "[n]o civil action shall be maintained under the provisions of this title unless it is commenced within three years after the claim accrued." 17 U.S.C. § 507 (b); see also Maurizio v Goldsmith, 84 F. Supp.2d 455, 461 (S.D.N.Y. 2000); Armstrong v. Virgin Records, Ltd., 91 F. Supp.2d 628, 639-640 (S.D.N.Y. 2000). A copyright infringement claim accrues, for purposes of § 507(b), when the plaintiff knows or should have known of the alleged infringement. See Maurizio, 84 F. Supp.2d at 461 (citingMerchant v. Levy, 92 F.3d 51, 56 (2d Cir. 1996)); Armstrong, 91 F. Supp.2d at 640 (citing Stone v. Williams, 970 F.2d 1043, 1048 (2d Cir. 1992)).
Even a cursory examination of Mahnke's initial pleading and subsequent motion for reconsideration reveals an express acknowledgment by Mahnke that he viewed Munchkin as infringing his copyright in 1993, a full six years prior to Mahnke's filing of the Complaint in this action. See Complaint; Mot. for Rec. On the face of his initial Complaint, plaintiff readily acknowledges that the instant copyright infringement action relates to "a product that was manufactured in 1993." Complaint. Similarly, the first paragraph of plaintiff's two page memorandum supporting his motion for reconsideration plainly states that the "potential infringement of the two dimensional toy started in 1993." Mot. for Rec. Moreover, plaintiff clearly knew of the alleged infringement as of 1993, since he asserts that he contacted and subsequently submitted a copy of his drawing to Munchkin in 1993 in order to resolve the matter amicably." Mot. for Rec.
Thus, Mahnke's Complaint, filed in 1999, seemingly comes three years after the expiration of the applicable statute of limitations for copyright infringement. See Mot. for Rec. Nonetheless, construing pro se plaintiff's Complaint and motion for reconsideration liberally, plaintiff has potential claims for copyright infringement that accrued within three years of the filing of this action, thus preventing the dismissal of this action in its entirety.
"For purposes of this motion, the Court reads plaintiff's motion for reconsideration liberally as an amended pleading, given that it contains the gravamen of his allegations and was the basis for Judge Griesa's Order vacating his earlier dismissal of this action. See March 16 Order.
The Second Circuit, although not endorsing a continuing violation approach to copyright infringement, permits recovery of damages for discrete acts of infringement occurring during the three-year period immediately prior to suit. See Stone, 970 F.2d at 1049-50; see also Armstrong, 91 F. Supp.2d at 641 (citations omitted); Byron v. Chevrolet Motor Div. of General Motors Corp., No. 93 Civ. 1116 (AJP), 1995 WL 465130, at *3 (S.D.N.Y. Aug. 7, 1995). Every infringing act is considered a distinct harm, giving rise to an independent claim for relief; however, recovery is limited to those infringing acts occurring within the three years preceding suit. See Stone, 970 F.2d at 1049-50; see also Armstrong, 91 F. Supp.2d at 642; Rosner v. Codata Corp., 917 F. Supp. 1009, 1017 (S.D.N.Y. 1996); Byron, 1995 WL 465130, at *3.
It cannot be discerned simply from the pleadings whether Munchkin's allegedly infringing product, identified by Mahnke as a "baby soda bottle," was in production within the three years prior
to the filing of the instant action. If it was, a timely and distinct cause of action would exist at each instance plaintiff's copyright-protected drawing was allegedly copied or distributed. See Armstrong, 91 F. Supp.2d at 642. Although damage claims for alleged infringement accruing earlier than three years prior to plaintiff's filing of this Complaint are time-barred under § 507(b), it would be improper to dismiss this claim with respect to acts of infringement occurring within three years of the filing of this suit. See Byron, 1995 WL 465130, at *3 (citing Stone, 970 F.2d at 1049-50); see also Armstrong, 91 F. Supp.2d at 642. Therefore, defendant's motion to dismiss, under § 507(b), should be granted only as to copyright infringement claims accruing earlier than March 23, 1996.
B. Laches
Munchkin's memorandum in support of its motion to dismiss raises, but ultimately fails to fully articulate or demonstrate, a laches defense.See Def. Mem. at 6, n. 5. In order to successfully invoke the equitable doctrine of laches, Munchkin must demonstrate both a "(1) lack of diligence by the party against whom the defense is asserted, and (2) prejudice to the party asserting the defense." Peyser v. Searle Blatt Co., Ltd., No. 99 Civ. 10785 (WK), 2000 WL 1071804, at *4-5 (S.D.N.Y. Aug. 2, 2000); Armstrong, 91 F. Supp.2d at 643 (citing Costello v. United States, 365 U.S. 265, 282, 81 S. Ct. 534, 543 (1961)); see also Jose Armando Bermudez Co. v. Bermudez Int'l., No. 99 Civ. 9346 (AGS), 2000 WL 1225792, at *8 (S.D.N.Y. Aug. 29, 2000) (citing Tri-Star Pictures Inc. v. Leisure Time Prods., BV, 17 F.3d 38, 44 (2d Cir. 1994)). Contrary to Munchkin's assertion, "mere delay is not, in and of itself, sufficient to bar a claim." Armstrong, 91 F. Supp.2d at 643 (citing Fort Knox Music Inc. v. Baptiste, 47 F. Supp.2d 481, 484 n. 1 (S.D.N.Y. 1999).
Although it is evident that Mahnke waited over six years to file his Complaint, Munchkin fails to proffer any evidence suggesting that Mahnke's delay in filing suit resulted in prejudice. See Byron 1995 WL 465130, at *8 (requiring a showing of a "little prejudice," despite plaintiff's seven-year delay in bringing action, in order to prevail on a laches defense). Accordingly, this action cannot be dismissed on the basis of laches at this early stage of the proceedings. Cf. Peyser, 2000 WL 1071804, at *3 (noting that a consideration of laches requires a fact-based inquiry, often unsuited to dispositive motions before discovery has taken place); Jose Armando Bermudez Co., 2000 WL 1225792, at *8 (same). This is not intended to suggest, however, that laches would not be a valid basis for dismissal upon a more fully developed record.
C. Sufficiency of Plaintiff's Copyright Infringement Pleading
A properly pled claim of copyright infringement must state 1) which specific original works are the subject of the copyright claim, 2) that plaintiff owns the copyright in those works, 3) that the copyrights have been registered in accordance with the statute, and 4) by what acts and during what time the defendant infringed the copyright. See Kelly v. L.L. Cool J., 145 F.R.D. 32, 36 (S.D.N.Y. 1992), aff'd, 23 F.3d 398 (2d Cir. 1994); see also Plunket v. Doyle, No. 99 Civ. 11006 (KMW), 2001 WL 175252, at *4 (S.D.N.Y. Feb. 22, 2001); Lindsay v. R.M.S. Titanic, 52 U.S.P.Q.2d 1609, 1612 (S.D.N.Y. 1999); DiMaggio v. Int'l Sports Ltd., 49 U.S.P.Q.2d 1215, 1216 (S.D.N.Y. 1998). The Court finds that Mahnke's Complaint only addresses the first three of these elements, and fails to satisfy the fourth element necessary in order to sufficiently state a claim for copyright infringement.
Through his motion for reconsideration, Mahnke clearly demonstrates his drawing, "Toys for Soda Beverage Bottle," is the original work subject to copyright protection, and he properly establishes ownership of that work by presenting a certificate of registration from the United States Register of Copyrights.
A certificate of registration issued from the United States Register of Copyrights, aside from establishing one of the necessary criteria for stating a copyright infringement claim, concurrently "constitutes prima facie evidence" of copyright ownership, although that "presumption may be rebutted." Carell v. The Shubert Org., Inc., 104 F. Supp.2d 236, 251 n. 10 (S.D.N.Y. 2000) (citing Rogers v. Koons, 960 F.2d 301, 306 (2d Cir. 1992)).
Mahnke has not, however, properly alleged by what acts and during what period of time the defendant infringed his copyright. This Court accepts defendant's assertion that it is difficult to respond to plaintiff's generic references to an infringing "baby soda bottle," which fail to identify those specific Munchkin products, or particular elements of the products, that are
allegedly infringing. See Complaint; Mot. for Rec.; Def. Mem. For example, accepting that Munchkin has been manufacturing baby soda bottles since at least 1993, it cannot be discerned from the Complaint whether Mahnke alleges that all of Munchkin's bottle products infringe or whether defendant continues to produce these allegedly infringing bottles. Moreover, since Mahnke only has a copyright in an illustration, it is unclear if he is claiming that there is a pictorial element of Munchkin's bottles that infringes or that the bottles themselves are infringing objects. These omissions leave plaintiff's Complaint lacking in detail sufficient to afford defendant the opportunity to draft a meaningful responsive pleading.
For the foregoing reasons, plaintiff's copyright infringement claims should be dismissed without prejudice. Considering, however, that the pleading's deficiencies may be curable, the prudent course here is to afford the plaintiff an opportunity to replead. See Plunket, 2001 WL 175252, at *6; DiMaggio, 49 U.S.P.Q.2d at 1218. If plaintiff chooses to replead, he should address, with sufficient specificity, the particular Munchkin product, products, or aspect of those products that allegedly infringes plaintiff's copyright, and he should further specify the dates or periods of time during which these particular products are alleged to have infringed plaintiff's copyright.
D. Motion to Strike
Defendant has also moved, pursuant to Rule 12(f), to strike plaintiff's references to patent issues, as they are immaterial to the copyright infringement action. The Court agrees; however, in light of the dismissal of the present Complaint, the motion to strike is rendered moot. Nevertheless, the basis for defendant's motion is well-taken and should prompt plaintiff to avoid references to irrelevant patent matters in any amended complaint.
Plaintiff appears to suggest that defendant's alleged copyright infringement of his drawing obstructed or altogether prevented his ability to seek future patent protection of his idea. See Mot. for Rec. Nonetheless, Mahnke concedes that he does not possess patent protection, may or may not have a patent application pending, and that defendant's product has been in the public use for at least several years. See Mot. for Rec. On these facts it is clear that plaintiff is not arguing and cannot maintain a claim of patent infringement. Moreover, plaintiff's mistaken conflation of patent and copyright issues creates confusion and further burdens defendant's ability to draft a responsive pleading as to the copyright infringement issue, which is the relevant subject matter of the instant litigation.
In order to state a claim of patent infringement, the plaintiff must allege that a person (1) without authority of the patent holder, (2) makes, uses, offers to sell, sells, or imports any patented invention within the United States, (3) during the term of the patent. See 35 U.S.C. § 27 1(a) (2000); see also Markman v. Westview Instruments. Inc., 517 U.S. 370, 374, 116 S. Ct. 1384, 1388 (1996). Even construing pro se plaintiff's Complaint and motion for reconsideration liberally, plaintiff, as a matter of law, cannot maintain a cognizable claim for patent infringement, without first being a patent owner.
Accordingly, any amended complaint filed by plaintiff should
exclude any and all references regarding patent issues, as they are irrelevant and create confusion regarding his copyright infringement claim.
CONCLUSION
For the reasons, set forth above, I respectfully recommend that defendant's motion to dismiss pursuant to Rule 12(b)(6) be granted, subject to certain conditions. First, as to any copyright infringement claims accruing more than three years prior to the filing of the Complaint, i.e. prior to March 23, 1996, I recommend that defendant's motion be granted and that these claims be dismissed with prejudice. As to defendant's motion to dismiss claims for copyright infringement accruing within the three years immediately prior to the filing of the Complaint, I recommend that defendant's motion be granted with leave to replead within thirty (30) days of the Court's decision with respect to this Report and Recommendation. Any amended pleading plaintiff files must be consistent with this Report and Recommendation to the extent it is adopted by the District Court. Specifically, plaintiff must identify the specific acts of infringement for which he seeks to hold defendant responsible (i.e. by what acts and/or products plaintiff claims defendant infringed his copyright), as well as the dates or time frame of such acts of infringement. Finally, any amended pleading should not contain irrelevant and confusing references to plaintiff's attempt to secure a patent.
Pursuant to 28 U.S.C. § 636 (b)(1)(C) and Rule 72 of the Federal Rules of Civil Procedure, the parties shall have ten (10) days from service of this report to file written objections. See also Fed.R.Civ.P. 6(a) and (e). Such objections shall be filed with the Clerk of the Court, with extra copies delivered to the chambers of the Honorable Laura T. Swain, District Judge, and to the chambers of the undersigned, Room 1660. Any requests for an extension of time for filing objections must be directed to United States District Judge Swain. Failure to file objections will result in a waiver of those objections for purposes of appeal. Thomas v. Arn, 474 U.S. 140, 106 S.Ct. 466 (1985); IUE AFL-CIO Pension Fund v. Herrmann, 9 F.3d 1049, 1054 (2d Cir. 1993); Frank v. Johnson, 968 F.2d 298, 300 (2d Cir.); Small v. Secretary of Health and Human Servs., 892 F.2d 15, 16 (2d Cir. 1989).