Arma v. Buyseasons, Inc.

• Decision Date: 08 December 2008
• Docket Number: No. 07 Civ. 10967.,07 Civ. 10967.
• Citation: 591 F.Supp.2d 637
• Parties: Tom ARMA, Toma Arma Studio, Inc. & Tom Arma Costumes, Inc., Plaintiffs, v. BUYSEASONS, INC., Buycostumes & Jalem Getz, Defendants.
• Court: U.S. District Court — Southern District of New York

591 F.Supp.2d 637

Tom ARMA, Toma Arma Studio, Inc. & Tom Arma Costumes, Inc., Plaintiffs, v. BUYSEASONS, INC., Buycostumes & Jalem Getz, Defendants.

No. 07 Civ. 10967.

United States District Court, S.D. New York.

December 8, 2008.

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

Edward C. Greenberg PC, by: Edward C. Greenberg, Esq., New York, NY, for Plaintiffs.

Foley & Lardner, LLP, by: Yonaton Aronoff, Esq., Frank W. DiCastri, New York, NY, for Defendants.

OPINION

SWEET, District Judge.

Defendants Buyseasons, Inc. ("Buyseasons") and Jalem Getz ("Getz") (collectively, the "Defendants")¹ have moved pursuant to Rules 12(b)(2), 12(b)(3) and 12(b)(6), Fed. R. Civ. P., to dismiss the Amended Complaint of Plaintiffs Tom Arma ("Arma"), Tom Arma Studios, Inc. ("Arma Studios") and Tom Arma Costumes, Inc. ("Arma Costumes") (collectively, the "Plaintiffs"), or in the alternative, to transfer the action to the Eastern District of Wisconsin. As set forth below, the motion to dismiss is granted in part and denied in part. The motion to transfer is denied.

I. PRIOR PROCEEDINGS AND FACTS

This action was commenced on December 3, 2007, and an Amended Complaint was filed on January 11, 2008. The instant motion was heard and marked fully submitted on March 26, 2008.

According to the Amended Complaint, Arma, who resides in Arizona, is a leading commercial photographer and costume designer. Am. Compl. ¶ 5. Arma "does business in the form and style of the co-Plaintiff corporations," Arma Studios and Arma Costumes, which are both Arizona corporations with their principal places of business in Tubac, Arizona. Id. ¶¶ 5-7. Arma Studios is engaged in the creation and licensing of photographic images, while Arma Costumes is engaged in the "creation, design, manufacture and licensing" of children's costumes. Id.

Buyseasons, a Delaware corporation with its principal place of business in New Berlin, Wisconsin, is an internet costume retailer. Id. ¶ 9. Buyseasons sells costumes through its principal website, www. buycostumes.com. Getz Aff. ¶ 2 n. 1. The Amended Complaint alleges that Getz, a resident of Wisconsin, is the President, CEO, and principal shareholder of Buyseasons. Id. ¶ 10.

On May 24, 2004, Plaintiffs and Buyseasons entered into a written "Exclusive On-Line Distribution Agreement" whereby Buyseasons agreed to distribute Tom Arma brand costumes on Buyseasons' website (the "Distribution Agreement"). Id. ¶ 2, Ex. D. Under the Distribution Agreement, Plaintiffs licensed their intellectual property, including trademarks and photographic images, to the Defendants. After several extensions, the Distribution Agreement expired on November 15, 2007. Id. at ¶¶ 32-33. Plaintiffs allege that despite the expiration of the Distribution Agreement, Defendants continued to "trad[e] on the name, trademarks and registered photographic images owned by [P]laintiffs" without authority. Id. at ¶ 3.

Plaintiffs assert that the acts of the Defendants give rise to claims for copyright infringement by Buyseasons, id. ¶¶ 48-54, 55-61; vicarious copyright infringement against Getz, id. ¶¶ 62-75; contributory copyright infringement against Getz, id. ¶¶ 76-90; unfair competition against the Defendants, id. ¶¶ 91-98; false designation and trade disparagement against the Defendants, id. ¶¶ 99-106; dilution against the Defendants, id. ¶¶ 107-111; and breach of contract. Id. ¶¶ 112-115.

II. THE MOTION TO DISMISS UNDER 12(B)(6) IS GRANTED IN PART AND DENIED IN PART

Defendants have moved, pursuant to Rule 12(b)(6), to dismiss Plaintiffs' claims for breach of contract and copyright infringement.

a. The 12(b)(6) Standard

In considering a motion to dismiss pursuant to Rule 12(b)(6), Fed.R.Civ.P., the Court construes the complaint liberally, "accepting all factual allegations in the complaint as true, and drawing all reasonable inferences in the plaintiff's favor," Chambers v. Time Warner, 282 F.3d 147, 152 (2d Cir.2002) (citing Gregory v. Daly, 243 F.3d 687, 691 (2d Cir.2001)). However, mere "conclusions of law or unwarranted deductions" need not be accepted. First Nationwide Bank v. Gelt Funding Corp., 27 F.3d 763, 771 (2d Cir.1994) (quotation marks and citation omitted). "The issue is not whether a plaintiff will ultimately prevail but whether the claimant is entitled to offer evidence to support the claims." Villager Pond, Inc. v. Town of Darien, 56 F.3d 375, 378 (2d Cir.1995) (quoting Scheuer v. Rhodes, 416 U.S. 232, 236, 94 S.Ct. 1683, 40 L.Ed.2d 90 (1974)). In other words, "`the office of a motion to dismiss is merely to assess the legal feasibility of the complaint, not to assay the weight of the evidence which might be offered in support thereof.'" Eternity Global Master Fund Ltd. v. Morgan Guar. Trust Co. of N.Y., 375 F.3d 168, 176 (2d Cir.2004) (quoting Geisler v. Petrocelli, 616 F.2d 636, 639 (2d Cir.1980)). However, "[t]o survive dismissal, the plaintiff must provide the grounds upon which his claim rests through factual allegations sufficient `to raise a right to relief above the speculative level.'" ATSI Commc'ns, Inc. v. Shaar Fund, Ltd., 493 F.3d 87, 98 (2d Cir.2007) (quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 127 S.Ct. 1955, 1965, 167 L.Ed.2d 929 (2007)).

b. The Breach of Contract Claim is Dismissed

At the outset, the Court notes that Plaintiffs did not respond to Defendants' arguments in support of their motion to dismiss the breach of contract claim, and therefore the Court may deem the claim abandoned. See, e.g., Abbatiello v. Monsanto Co., 522 F.Supp.2d 524, 530 (S.D.N.Y.2007) (citing, inter alia, In re Refco Capital Mkts., Ltd. Brokerage Customer Sec. Litig., No. 06 Civ. 643(GEL), 2007 WL 2694469, at *6 (S.D.N.Y. Sept. 13, 2007)); Lipton v. County of Orange, N.Y., 315 F.Supp.2d 434, 446 (S.D.N.Y.2004) ("This Court may, and generally will, deem a claim abandoned when a plaintiff fails to respond to a defendant's arguments that the claim should be dismissed." (citing Jessamy v. City of New Rochelle, 292 F.Supp.2d 498, 504 (S.D.N.Y.2003)). Nonetheless, the Court considers the breach of contract claim on its merits, and finds that the claim must be dismissed.

In support of their breach of contract claim, Plaintiffs have alleged that Defendants: (i) "[f]ailed to seek and obtain approvals for the use of Plaintiffs' intellectual property as set forth hereinabove;" (ii) "[f]ailed to make timely payments to the Plaintiffs;" and (iii) "[f]ailed to properly account to Plaintiffs as to the specific character, nature and extent of sales of Arma's goods as set out in paragraph 5.1 of the agreement between the parties." Am. Compl. ¶ 113. Plaintiffs also incorporate by reference paragraphs 1-107 of the Amended Complaint, see id. ¶ 112, none of which allege that Defendants engaged in wrongful conduct during the contract period. Rather, these allegations describe Defendants' wrongful conduct "after the contract period had expired." Id. at ¶ 41. The claim based on an alleged failure "to seek and obtain approvals for the use of Plaintiffs' intellectual property as set forth hereinabove" similarly relates only to Defendants' post-contract activity, not to any breaches committed while the Distribution Agreement was in place.

The bare allegations that Defendants "failed to make timely payments" and "failed to properly account" to Plaintiffs, Am. Compl. ¶ 113, are, without more, conclusory. They are unsupported by any specific facts indicating what particular payments were late, when they were due and made, how such late payments give rise to a claim under the Distribution Agreement, or how such a claim translates into damages.

In the absence of a clear statement of a breach, an implication of breach is inappropriate. It is not "proper to assume that the [Plaintiffs] can prove facts which [they have] not alleged or that the defendants have violated the [] laws in ways that have not been alleged." Associated Gen. Contractors, Inc. v. Cal. State Council of Carpenters, 459 U.S. 519, 526, 103 S.Ct. 897, 74 L.Ed.2d 723 (1983). Although federal complaints do not need to include intricate details, "more than labels and conclusions" are required, and, as noted above, the factual allegations "must be enough to raise a right to relief above a speculative level." Bell Atl. Corp., 127 S.Ct. at 1965; see also De Jesus v. Sears, Roebuck & Co., 87 F.3d 65, 70 (2d Cir. 1996) ("A complaint which consists of conclusory allegations unsupported by factual assertions fails even the liberal standard of Rule 12(b)(6).") (quoting Palda v. Gen. Dynamics Corp., 47 F.3d 872, 875 (7th Cir. 1995)).

Because Plaintiffs allege no facts supporting a claim for breach of contract, that claim is dismissed.

c. The Motion to Dismiss the Copyright Claims is Denied

To withstand a motion to dismiss for failure to state a claim, a properly plead copyright infringement claim must allege: "1) which specific original works are the subject of the copyright claim, 2) that plaintiff owns the copyrights in those works, 3) that the copyrights have been registered in accordance with the statute, and 4) by what acts during what time the defendant infringed the copyright." Kelly v. L.L. Cool J., 145 F.R.D. 32, 36 (S.D.N.Y. 1992) (citations omitted), aff'd, 23 F.3d 398 (2d Cir.1994). Defendants assert that the Amended Complaint fails to allege the infringing acts with requisite specificity.

The Amended Complaint contains a list of 14 registered images, including registration numbers and dates and appended copyright registration certificates, which "serve as a predicate" for Plaintiffs' copyright infringement claims, and alleges that subsequent to the termination of the parties' agreement on November 15, 2007, Defendants "have displayed on their website, and caused to be displayed on other sites, at least 26 images registered in Plaintiff's name." Am. Compl. ¶¶ 15, 17, 42.

While "Rule 8 of the Federal Rules of Civil Procedure requires that the particular...