Carroll v. Kahn
| Decision Date | 10 October 2003 |
| Docket Number | 03-CV-0656. |
| Parties | SCOTT FRANCIS CARROLL, Plaintiff, v. TIMOTHY KAHN, BENJAMIN KAHN, BRIAN KAHN, ARTEMIS WILDLIFE FOUNDATION, and SONOMA VALLEY FILM FESTIVAL, Defendants. |
| Court | U.S. District Court — Northern District of New York |
ROBERT S. MELONI, P.C., New York NY Attorneys for Defendants.
RAYMOND J. DOWD, ESQ., OF COUNSEL.
ROBERT S. MELONI, ESQ. RONALD W. ADELMAN, ESQ., OF COUNSEL.
Plaintiff Scott Francis Carroll commenced the instant action asserting claims of copyright infringement (First Cause of Action); breach of contract (Second Cause of Action); tortious interference with contract (Third Cause of Action); and a violation of the Lanham Act, 15 U.S.C. § 1125(a) (Seventh Cause of Action). The remaining causes of action seek an injunction (Fourth Cause of Action); an accounting (Fifth Cause of Action); and an impounding (Sixth Cause of Action). Defendants now move to dismiss pursuant to Fed. R. Civ. P. 12 on the grounds that: (1) the Court lacks personal jurisdiction over Defendants Brian Kahn and The Sonoma Society;1 and (2) Plaintiff has failed to state a claim of (i) copyright infringement; (ii) breach of contract; (iii) tortious interference with contract; or (iv) the false designation of origin.
The following facts are taken from the Complaint and, for purposes of the instant motion, are assumed to be true.
Defendants Ben Kahn and Tim Kahn retained Plaintiff in December 2000 to produce a film, The Last Link (the "film"), about the dying culture of shepherding in France and the United States. Plaintiff created the business plan for the film, created the promotional materials for the film, co-authored the storyline, co-authored the treatment, performed all pre-production work and created and produced the film. Ben and Tim Kahn promised Plaintiff that he would receive credit as co-author and produced for the film. Despite Plaintiff's work and the expectation that there would be a written contract, the parties never entered into a written contract. At some point in time, Ben and Tim Kahn sought to change Plaintiff's responsibilities. They demanded that he assume fund raising responsibilities and reveal his contacts in the industry. Plaintiff refused and demanded a written contract. Defendants demanded that Plaintiff enter into a certain side agreement. Plaintiff refused. Defendants responded that they needed to assess the work Plaintiff claimed to have completed before they could come to terms on a written agreement. On October 5, 2001, Defendants terminated their relationship with Plaintiff.
In June 2001, Plaintiff submitted a copyright application to the United States Copyright Office for the film, naming himself and Ben Kahn as the copyright claimants. A copyright registration, PAU 206270142, was issued with Plaintiff and Ben Kahn as the authors. Plaintiff alleges that Defendants used Plaintiff's storyline and treatment for the film, failed to give him credit as producer and author of the film, failed to compensate him for his services, improperly claim ownership of the rights to the film and copyright, and improperly aired the film without Plaintiff's consent and in violation of his exclusive copyright.
In his copyright cause of action, Plaintiff claims that he and Ben Kahn jointly authored the treatment for the film focusing on the life of Pete Camino, that he solely authored the treatment for the film focusing on the life of Johnny Camino, and that Defendants wrongfully used Plaintiff's treatment focusing on the life of Johnny Camino.
In his breach of contract cause of action, Plaintiff claims that Defendants failed to give him proper credit as author of the Johnny Camino story, did not give him proper credit as the producer of the film, wrongfully attempted to alter the duties of his position, wrongfully terminated his employment and failed to compensate him for the work he did perform.
With respect to the tortious interference with contract claim, Plaintiff contends that Defendants Brian Kahn and Artemis induced Ben and Tim Kahn to breach their contract with Plaintiff.
Finally, with respect to the Lanham Act claim, Plaintiff contends that Defendants improperly marketed the film as belonging to them and, thus, falsely represented the origin of the film.
When reviewing a motion to dismiss, the Court "must accept all allegations in the complaint as true and draw all inferences in the non-moving party's favor." Patel v. Contemporary Classics of Beverly Hills, 259 F.3d 123, 126 (2d Cir. 2001). "A court may dismiss a complaint [under Fed. R. Civ. P. 12] only if it is clear that no relief could be granted under any set of facts that could be proved consistent with the allegations.'" Swierkiewicz v. Sorema N.A., 534 U.S. 506, 514 (2002) (quoting Hishon v. King & Spalding, 467 U.S. 69, 73 (1984)). "`The issue is not whether a plaintiff will ultimately prevail but whether the claimant is entitled to offer evidence to support the claims.'" York v. Ass'n of the Bar of the City of New York, 286 F.3d 122, 125 (2d Cir.) (citing Scheuer v. Rhodes, 416 U.S. 232, 236 (1974)), cert. denied, 537 U.S. 1089 (2002). A complaint need only include `a short and plain statement of the claim showing that the pleader is entitled to relief.'" Swierkiewicz, 534 U.S. at 512 (quoting Fed. R. Civ. P. 8(a)). "This simplified notice pleading relies on liberal discovery rules and summary judgment motions to define disputed facts and issues and to dispose of unmeritorious claims." Id. Thus, a complaint is sufficient if it gives the defendant fair notice of the plaintiff's claims, the grounds upon which they rest, and states claims upon which relief could be granted. Id. at 514.
Defendants Brian Kahn and The Sonoma Society move to dismiss pursuant to Fed. R. Civ. P. 12(b)(2) claiming lack of personal jurisdiction. These two Defendants claim that they have not conducted business in New York, did not commit a tort in New York and did not commit a tort outside of New York causing injury inside New York.
On a motion to dismiss for lack of personal jurisdiction, the Plaintiff bears the burden of demonstrating the Court has jurisdiction. Kernan v. Kurz-Hastings, Inc., 175 F.3d 236, 240 (2d Cir. 1999). Where the motion to dismiss is made prior to discovery, the plaintiff can defeat the motion with "legally sufficient allegations of jurisdiction." Metropolitan Life Ins. Co. v. Robertson-Ceco Corp., 84 F.3d 560, 566 (2d Cir. 1996); see Ball v. Metallurgie Hoboken-Overpelt S.A., 902 F.2d 194, 197 (2d Cir. 1990); Jazini v. Nissan Motor Co., Ltd., 148 F.3d 181 (2d Cir. 1998). A plaintiff's averment of jurisdictional facts must be credited as true. In re; Magnetic Audiotape Antitrust Litigation, 334 F.3d 204, 206 (2d Cir. 2003).
There are no allegations in the Complaint that Brian Kahn or The Sonoma Society transact business or contract to supply goods or services in New York. Thus, jurisdiction cannot be sustained on the basis of N.Y.C.P.L.R. § 302(a)(1). There similarly is no basis for invoking jurisdiction pursuant to N.Y.C.P.L.R. § 302(a)(3). The Complaint alleges that "Defendants committed a tortious act without the State causing harm to Plaintiff's copyright property within New York and reasonably should expect the act to have consequences in the State." (Compl. ¶ 3.) "[S]ection 302(a)(3) is not satisfied by remote or consequential injuries such as lost commercial profits which occur in New York only because the plaintiff is domiciled or doing business here." Lehigh Valley Indus. v. Birenbaum, 527 F.2d 87, 94 (2d Cir. 1976). An injury occurs in New York only if New York "is the location of the original event which caused the injury." Hermann v. Sharon Hosp., Inc., 135 A.D.2d 682, 683 (2d Dep't 1987); see DiStefano v. Carozzi North Am., Inc., 286 F.3d 81, 84-85 (2d Cir. 2001) (). Here, the damage to Plaintiff is alleged to have been caused by showing the film on April 12, 2003 without giving proper credit to Plaintiff. Thus the first effect of the tort that ultimately produced the final economic injury was in Sonoma, California; not in New York. Accordingly, Plaintiff has not set forth legally sufficient allegations to support the injury in New York requirement. Even assuming there has been an injury to property in this state, there are no allegations that Brian Kahn or The Sonoma Society either: (1) regularly do or solicit business, engage in any persistent course of conduct, or derive substantial revenue from goods used or consumed or services rendered in New York; or (2) derive substantial revenue from interstate or international commerce. N.Y.C.P.L.R. § 302(a)(3). See Jazini, 148 F.3d at 184-85; Lehigh Valley Indus., 527 F.3d at 93-94. The Complaint must, therefore, be dismissed as to Defendants Brian Kahn and the Sonoma Society for lack of personal jurisdiction.
Defendants next move to dismiss the copyright infringement claim on the grounds that: (1) any copyright owned by Plaintiff is limited to the treatment and does not extend to the film; (2) Plaintiff's registration of the treatment is invalid because of his misrepresentation on the registration application; (3) Artemis is a co-owner of any copyright with rights to grant non-exclusive licenses in the copyright; and (4) Plaintiff's contributions are not copyrightable.
Under settled copyright law
[i]n the absence of an agreement to the contrary, one joint owner may always transfer his interest in the joint work to a third party, subject only to the general requirements of a valid transfer of copyright. However, one joint owner does not have the...
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