Kuklachev v. Gelfman

Citation600 F.Supp.2d 437
Decision Date26 February 2009
Docket NumberNo. 08-CV-2214(CPS)(VVP).,08-CV-2214(CPS)(VVP).
PartiesYuri KUKLACHEV, Dmitri Kuklachev, Plaintiffs, v. Mark GELFMAN, Gelfman International Enterprises, Inc., Yanis Gelfman, Tribeca Performing Arts Center, Ticketmaster.com, Palace of Fine Arts, Wilkins Theater at Kean University, Onlineseats.com, John Hancock Hall, Gwinnett Center, Napa Valley Opera House, LA's Wilshire Ebell's Theater, Seattle Repertory Theater, Dmitry Krassotkine, Yuri Potoski, Michael Zlotnikov, Andrew Yankovis, Stanislav Nemoy, Vladimir Krasnolozhkin, and Vladimir Anisimov, Defendants.
CourtU.S. District Court — Eastern District of New York

Gary Tsirelman, Brooklyn, NY, Julia Paskalova, Gary Tsirelman P.C., New York, NY, for Plaintiffs.

Clifford Gee-Tong Tsan, George R. McGuire, Bond, Schoeneck & King PLLC, Syracuse, NY, James F. Woods, Woods & Associates, P.C., Peter A. Cross, Jacob, Medinger & Finnegan, LLP, Robert L. Raskopf, Jessica A. Rose, Michael Bogner, Quinn Emanuel Urquhart Oliver & Hedges, LLP, Michael Paul Kandler, Callan Regenstreich Koster & Brady, New York, NY, for Defendants.

MEMORANDUM OPINION AND ORDER

CHARLES P. SIFTON, Senior District Judge.

Yuri Kuklachev and Dmitri Kuklachev ("plaintiffs") commenced this action against defendants Mark Gelfman ("Gelfman"), Gelfman International Enterprises, Inc. ("Gelfman Inc."), Yanis Gelfman, Tribeca Performing Arts Center, Ticketmaster.com, Palace of Fine Arts, Wilkins Theater at Kean University, Onlineseats.com, Tillinger's Concierge, Inc., Gwinnett Center, Napa Valley Opera House, The Ebell Operating Company, Seattle Repertory Theater, Yuri Potoski, Michael Zlotnikov, Andrey Yankovis, Stanislav Nemoy, Vladimir Krasnolozhkin, Vladimir Anisimov, Dmitry Krassotkine, other as yet unidentified persons and companies, and the State of New Jersey, on June 2, 2008. Plaintiffs make the following claims in their complaint against each of the defendants: (1) federal trademark infringement under the Lanham Act, 15 U.S.C. § 1114; (2) false representation under the Lanham Act, 15 U.S.C. § 1125(a); (3) unfair competition and false designation under the Lanham Act, 15 U.S.C. § 1125(a); (4) trademark dilution under the Lanham Act, 15 U.S.C. § 1125(c); (5)cybersquatting in violation of the Lanham Act, 15 U.S.C. § 1125(d); (6) violation of privacy and publicity rights under the New York Civil Rights Law, Article 5, § 50 and § 51, N.Y. CLS Civ. R. § 50, 51; (7) injury to business reputation and trademark dilution under N.Y. GBL § 360-l; (8) unfair competition and false advertizing under the New York Unfair Trade Practices Law, GBL § 349-50 and New York City Administrative Code § 20-700, § 20-701; (9) unfair competition under New York common law; (10) unjust enrichment under New York common law; (11) copyright infringement; (12) trade dress infringement under the Lanham Act, 15 U.S.C. § 1125(a); (13) fraud; (14) conversion; (15) fraud in trademark application;1 and (16) prima facie tort.

Now before the court is a motion filed on behalf of Gelfman Inc., Mark Gelfman ("Gelfman"), and Yanis Gelfman (the "Gelfmans" or "defendants") to dismiss the entire complaint pursuant to Fed.R.Civ.Pro. Rule 12(b)(6) for failure to state a claim upon which relief can be granted, or, in the alternative, pursuant to Fed.R.Civ.Pro 12(e), directing the plaintiffs to file a more definite statement. With respect to Claim XIII for fraud, defendants move to dismiss pursuant to Rule 9(b). Additionally, defendants move to dismiss pursuant to Rule 12(b)(1) and 12(b)(3) for lack of subject matter jurisdiction and improper venue based on an arbitration clause in a contract between Yuri Kuklachev and Gelfman, Inc. This is properly addressed as a motion to dismiss.2 For the reasons set forth below, the motion to compel arbitration is granted with respect to two claims and denied with respect to the remaining claims, the motion to dismiss pursuant to Rule 12(b)(6) is granted in part and denied in part, the motion to dismiss pursuant to Rule 9(b) is denied, and the motion to require a more definitive statement under 12(e) is denied.

BACKGROUND

The following facts are taken from the plaintiffs' complaint and are taken as true for the purposes of the 12(b)(6) motion. Disputes are noted.

The Parties

Yuri Kuklachev ("Kuklachev") is a Russian national who tours the world with his troupe of cats and clowns, putting on theatrical performances. Kuklachev performs in the shows, manages the troupe, and organizes performances. Dmitri Kuklachev is Yuri Kuklachev's son, and is the artistic director and star performer of the troupe.

Defendant Mark Gelfman is the president of Gelfman Inc., a promotional and management business for entertainments. Yanis Gelfman is Mark Gelfman's son and the general manager of Gelfman Inc. All three of these defendants are collectively referred to as "the Gelfmans."

Defendants Palace of Fine Arts, Wilkins Theater at Kean University (an entity of the State of New Jersey), Gwinnett Center, Napa Valley Opera House, Wilshire Ebell Theater, and Seattle Repertory Theater are venues that plaintiffs claim hosted shows produced by the Gelfmans that allegedly infringed upon plaintiffs' trademarks.

Defendants Onlineseats.com and Ticketmaster.com are online ticket vendors that plaintiffs claim sold tickets to the allegedly infringing shows.

Defendants Yuri Potoski, Michael Zlotnikov, Andrey Yankovis, Stanislav Nemoy, Vladimir Krasnolozhkin, Vladimir Anisimov, and Dmitry Krassotkine were performers and crew members in the production of the allegedly infringing show.

Historical Background

In the early 1970's, plaintiff Kuklachev, a well-recognized clown, became known for public entertainments performed with his troupe of cat performers and clowns. Complaint at ¶ 44 ("Compl."). Rather than training the cats to perform tricks, Kuklachev selected his cats for each role based on their individual skills and preferences, much like actors in a theater. Id. at ¶ 45. By the mid-1970's, Kuklachev's cat performances were a recognized success in various countries and in the United States. Id. at ¶ 46. Excerpts from Kuklachev's shows have been shown on television stations in various countries, including the United States, and have been discussed in multiple entertainment news reports. Id. at ¶ 46. In the former USSR, Kuklachev's performances were included in children's television shows, official state concerts, and transmitted on Soviet television channels. Id. Busts and action figures of Kuklachev with his cats were created in Russia and exported to other countries. Id. Plaintiffs won numerous entertainment awards for their work. Id. at ¶ 49.

The theater in Moscow is a popular tourist destination, and is apparently the only venue in the world that specializes in performances by cats. Id. at ¶ 50.

Kuklachev first toured the United States in 1977, and returned to the United States again in 1980. Id. at ¶ 47. During plaintiffs' 2001 tour of the United States, the Arizona Republic referred to the show as "Kuklachov's3 Moscow Cat Theater." Id. at ¶ 61, Ex. B.

2005 and 2006 Tours

In 2005 and 2006, Kuklachev brought his performance to the United States for an extended tour, during which there were numerous successful performances, all under the name of "Moscow Cats Theatre." Id. at ¶ 50. For these tours, Kuklachev hired defendants to assist the plaintiffs in arranging and marketing their performances. Id. at ¶ 59. There were no prior business relations between the plaintiffs and defendants. Id.

Prior to commencing the 2005 tour, Yuri Kuklachev and Gelfman Inc. signed a contract.4 The contract designates Gelfman Inc. as "Promoter" and Yuri Kuklachev as "Artist," and states that the document is a "performance agreement" for the performance of "Kuklachev's Cat Theater," which is called the "Show" (Dmitri Kuklachev was not a party to this contract). Gelfman Aff. Ex. A. The duration of the contract was from September 9, 2005 to September 9, 2007. The contract states that the "Promoter engages Artist to perform the Show," and refers to the Show as a product of "[the Artist's] theater." Id. at 2. The Promoter agrees not to "contract with or promote any other performances [inside the United States] during the duration of this Agreement ... that utilizes animals as the essential and predominant part of their performance." Id. The promoter "has no right to engage any other artist" to work in the Show or to be included in performances. Id. Id. at 5. The contract states that the Artist will provide the Promoter with information, photographs, and other information for the purpose of advertising the show. Id. at 6. The Promoter promises up to three minutes of video recording of the show for use in advertising. Id. The Promoter agrees to pay for living expenses, animal and veterinary expenses, travel expenses laundry expenses, and commercial liability insurance. Id. at 7-9.

Upon Kuklachev's arrival in the United States in 2005, major news outlets in the United States published stories about Kuklachev and his many years of work with the Moscow Cats Theatre. Id. at ¶ 55. In interviews on several television shows to promote his performances, Kuklachev related the history of how he had founded the Moscow Cats Theatre thirty years prior. Id. at ¶ 57.

In 2005, the plaintiffs brought an extensive assortment of scenic stage materials and props into the United States from Russia, some of which were manufactured specifically for the Moscow Cats Theatre. Id. at ¶ 183. In late December 2006, Gelfman asked Kuklachev to store the scenic materials in the United States under Gelfman's supervision, in order to save the money required to...

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