Curcio Webb v. National Benefit Programs Agency

• Decision Date: 31 March 2005
• Docket Number: No. C2-03-559.,C2-03-559.
• Citation: 367 F.Supp.2d 1191
• Parties: CURCIO WEBB LLC, Plaintiff, v. NATIONAL BENEFIT PROGRAMS AGENCY, INC., Defendant.
• Court: U.S. District Court — Southern District of Ohio

367 F.Supp.2d 1191

CURCIO WEBB LLC, Plaintiff, v. NATIONAL BENEFIT PROGRAMS AGENCY, INC., Defendant.

No. C2-03-559.

United States District Court, S.D. Ohio, Eastern Division.

March 31, 2005.

COPYRIGHT MATERIAL OMITTED

Joseph William Ryan, Jr., Eric Benjamin Gallon, Karen K. Hammond, Porter, Wright, Morris & Arthur, Columbus, OH, for Plaintiff.

David A. Campbell, III, Douglas Langston Rogers, Vorys, Sater, Seymour & Pease, Columbus, OH, for Defendant.

OPINION AND ORDER

MARBLEY, District Judge.

I. INTRODUCTION

This matter is before the Court on Defendant, National Benefit Programs, Inc.'s,¹ ("National Benefit") Motion for Judgment on the Pleadings pursuant to Rule 12(c) of the Federal Rules of Civil Procedure [Docket No. 15]. For the reasons set forth herein, Defendant's Motion is GRANTED in part and DENIED in part.

II. BACKGROUND

A. Facts

Plaintiff, Curcio Webb, is a limited liability company organized under the laws of the State of Illinois, and has a place of business in San Francisco, California. Curcio Webb is an employee benefits and human resources consultant that specializes in assisting companies in selecting providers to administer companies' health, payroll, and other employee benefit plans. Curcio Webb also assists companies with the negotiation of contracts with providers, implementation and management of the companies' benefit plans, and design and selection of technology to manage and monitor benefit plans. Curcio Webb creates and prepares what it deems to be a confidential and proprietary "proposal document" on behalf of each client. These proposal documents help Curcio Webb's clients identify and contract with independent providers to administer, among other things, the company's health and welfare benefit services. The proposal documents also solicit detailed information from various providers and allow Curcio Webb's clients to obtain competitive proposals from providers to administer the company's benefit services.

Curcio Webb expends significant time, effort, and expense in preparing each proposal document. Plaintiff alleges that its proposal document, and in particular the "Scope of Services" section of the document, is the culmination of many years of experience and process improvement. Curcio Webb prepared and distributed a 28-page Proposal Document on behalf of one of its clients in March 2001 ("Plaintiff's Proposal Document"). (Compl.Ex.A) (appearing in redacted form). Plaintiff's Proposal Document was distributed to providers in hard copy and electronic form. Curcio Webb's name and a legal copyright notice appear on each page of Plaintiff's Proposal Document. Curcio Webb owns a registered copyright for Plaintiff's Proposal Document, which is a "work made for hire." (Compl.Ex. C). Curcio Webb is the sole author and owner of Plaintiff's Proposal Document.

Plaintiff's Proposal Document contains a "Use of Information" section on pages 4-5 that sets forth the confidential and proprietary nature of Plaintiff's Proposal Document and restricts the use of that document.² On page 2 of Plaintiff's Proposal Document, Curcio Webb includes its contact information, including an e-mail address for one of its principals, Jamie L. Curcio ("jcurcio@curciowebb.com").

National Benefit is an Ohio corporation that has its principal place of business in Columbus, Ohio. National Benefit is an employee benefits consultant, which assists companies in selecting providers to administer companies' health and other employee benefit plans, aids companies in the negotiation of contracts with providers, and assists in the implementation and management of company benefit plans. According to Curcio Webb, National Benefit is a competitor.³ In November 2002, Defendant prepared and distributed a document on behalf of one of its clients ("Defendant's Proposal Document"). The name, "National Benefit Programs," appears on the bottom of each page of Defendant's Proposal Document. On page 5 of Defendant's Proposal Document, Defendant includes contact information for National Benefit Programs, Inc., including an e-mail address for Joseph Concheck ("JConcheck @NBPGlobal.com").

Upon reviewing Defendant's Proposal Document in electronic form, Jamie Curcio's e-mail address, "jcurcio@curciowebb.com," would appear visible to the user when a user held his computer mouse over "JConcheck@NBPGlobal.com." In fact, when one clicked on the "JConcheck@NBPGlobal.com" hyperlink, a new e-mail message would appear with Jamie Curcio's e-mail address appearing in the "To" section. This would allow the user to e-mail Curcio Webb directly in response to Defendant's Proposal Document.

B. Procedural History

On June 19, 2003, Plaintiff filed its complaint (the "Complaint") alleging the following claims against Defendant: (1) copyright infringement in violation of 17 U.S.C. § 101 et seq.; (2) false designation of origin in contravention of § 43(a) of the Lanham Act of 1946, (codified as amended at 15 U.S.C. § 1125(a)); (3) misappropriation of trade secrets under OHIO REV.CODE § 1333.62 and common law; and (4) unfair competition and misappropriation of proprietary and confidential business information in violation of § 43(a) of the Lanham Act of 1946, (codified as amended at 15 U.S.C. § 1125(a)) and common law. On September 8, 2003, Defendant filed its answer (the "Answer") to the Complaint, in which it generally denied all of Plaintiff's claims and set forth a myriad of affirmative defenses.

On July 9, 2004, Defendant filed its Motion for Judgment on the Pleadings in which it contends, inter alia, that Plaintiff is not entitled to "enhanced damages" or attorney's fees in Counts I, II, or IV.⁴ Defendant also moves this Court to dismiss Plaintiff's trade secret misappropriation claim in Count III. In its Memorandum in Opposition to Defendant's Motion for Judgment on the Pleadings, Plaintiff asserts that it has not requested several of the remedies that Defendant brings to this Court's attention. Plaintiff asks this Court to deny Defendant's Motion in its entirety, as Defendant "misconstrues legal precedent," and "ignores the policies" underlying the federal and state statutes that Defendant violated. In Defendant's Reply, it maintained that Plaintiff failed to set forth a claim of unfair competition under 15 U.S.C. § 1125(a), and that Plaintiff's common law unfair competition and misappropriation claims were preempted under 17 U.S.C. § 301. Defendant's Motion is now ripe for adjudication.

III. STANDARD OF REVIEW

A motion for judgment on the pleadings may be made "[a]fter the pleadings are closed but within such time as not to delay the trial." Fed.R.Civ.P. 12(c). Pleadings are considered "closed" once a complaint and answer have been filed. FED.R.CIV.P. 7(a). Here, the Defendant's Answer was filed on September 8, 2003, and the present Motion was filed on July 9, 2004.

Where the Rule 12(c) motion is based on the argument that the complaint fails to state a claim upon which relief may be granted, it is judged under the same standard of review as a Rule 12(b)(6) motion. Morgan v. Church's Fried Chicken, 829 F.2d 10, 11 (6th Cir.1987) (finding "[w]here the Rule 12(b)(6) defense is raised by a Rule 12(c) motion for judgment on the pleadings, we must apply the standard for a Rule 12(b)(6) motion in reviewing the district court's decision").

In considering a Rule 12(b)(6) motion to dismiss, the Court is limited to evaluating whether a plaintiff's complaint sets forth allegations sufficient to make out the elements of a cause of action. Windsor v. The Tennessean, 719 F.2d 155, 158 (6th Cir.1983). A complaint should not be dismissed under Rule 12(b)(6) "unless it appears beyond doubt that the [p]laintiff can prove no set of facts in support of his claim which would entitle him to relief." Lillard v. Shelby County Bd. of Educ., 76 F.3d 716, 724 (6th Cir.1996) (quoting Conley v. Gibson, 355 U.S. 41, 45-46, 78 S.Ct. 99, 2 L.Ed.2d 80 (1957)). This Court must "construe the complaint liberally in the plaintiff's favor and accept as true all factual allegations and permissible inferences therein." Conley, 355 U.S. at 45-46, 78 S.Ct. 99. While the complaint need not specify every detail of a plaintiff's claim, it must give the defendant "fair notice of what the plaintiff's claim is and the grounds upon which it rests." Gazette v. City of Pontiac, 41 F.3d 1061, 1064 (6th Cir.1994) (quoting Conley, 355 U.S. at 47, 78 S.Ct. 99). Though liberal, this standard of review requires more than the bare assertion of legal conclusions. Allard v. Weitzman (In re DeLorean Motor Co.), 991 F.2d 1236, 1240 (6th Cir.1993). A complaint must contain either direct or inferential allegations with respect to all the material elements necessary to sustain a recovery under some viable legal theory. Id.

IV. ANALYSIS

A. CountI — Copyright Infringement under 17 U.S.C. § 101 et seq.

Defendant argues that Plaintiff is not entitled to recover either "enhanced damages"⁵ or attorney's fees in connection with its copyright infringement claim. Plaintiff retorts that it is seeking neither statutory damages nor attorney's fees under Count I; instead, Plaintiff petitions this Court to grant punitive damages for Defendant's alleged copyright infringement. Given the fact that Plaintiff does not petition the Court for statutory damages or attorney's fees for Defendant's alleged copyright infringement, the Court will focus its analysis of Count I solely on Plaintiff's request for punitive damages.

The parties disagree as to whether a plaintiff, in a copyright infringement action may recover punitive damages for the alleged infringement. Defendant argues that Congress did not authorize the award of punitive damages as a remedy for copyright infringement; therefore, such damages may not be awarded to Plaintiff. (Def.'s Mem. Supp. J. Pleadings at 6-7 (citing 17 U.S.C. § 504; Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417, 431, 104 S.Ct. 774, 78 L.Ed.2d 574 (1984); Wrench LLC v. Taco...