Bernath v. Youtube LLC et al
Filing
52
OPINION AND ORDER granting 33 motion to dismiss for failure to state a cause of action and the 1 Complaint is dismissed without prejudice to filing an amended complaint within 14 days; otherwise denying Motion to dismiss for lack of personal jurisdiction or to transfer case as premature and pending the filing of an Amended Complaint; denying as moot 39 Motion for discovery, Motion to Continue until after discovery on jurisdiciton. Signed by Judge John E. Steele on 12/6/2016. (RKR)
UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
FORT MYERS DIVISION
DANIEL A. BERNATH,
Plaintiff,
v.
Case No: 2:16-cv-40-FtM-29CM
DON SHIPLEY and CAROL DIANE
BLAZER SHIPLEY,
Defendants.
OPINION AND ORDER
This matter comes before the Court on defendants' Motion to
Dismiss Complaint for Failure to State a Cause of Action and Lack
of Personal Jurisdiction, or Alternatively, Motion to Transfer
Venue (Doc. #33) filed on July 25, 2016.
Plaintiff filed an
Opposition to Motion to Dismiss, Motion to Conduct Discovery Re
Jurisdiction of Defendants, Motion to continue hearing/decision
until after Discovery on Jurisdiction (Doc. #39), and defendants
filed a Response in Opposition to Plaintiff’s Motion to Conduct
Jurisdictional Discovery (Doc. #42).
The Court concludes that the Complaint is insufficiently
pled, and must be dismissed without prejudice and with leave to
file an amended complaint.
In the amended complaint, plaintiff
may make additional allegations regarding personal jurisdiction.
Defendants may thereafter respond to the amended complaint by
motion or answer.
I.
Under Federal Rule of Civil Procedure 8(a)(2), a Complaint
must contain a “short and plain statement of the claim showing
that the pleader is entitled to relief.”
Fed. R. Civ. P. 8(a)(2).
This obligation “requires more than labels and conclusions, and a
formulaic recitation of the elements of a cause of action will not
do.”
Bell Atl. Corp. v. Twombly, 550 U.S. 544, 555 (2007)
(citation omitted).
To survive dismissal, the factual allegations
must be “plausible” and “must be enough to raise a right to relief
above the speculative level.”
Id. at 555.
See also Edwards v.
Prime Inc., 602 F.3d 1276, 1291 (11th Cir. 2010).
“more
than
an
accusation.”
unadorned,
Ashcroft
This requires
the-defendant-unlawfully-harmed-me
v.
Iqbal,
556
U.S.
662,
678
(2009)(citations omitted).
In deciding a Rule 12(b)(6) motion to dismiss, the Court must
accept all factual allegations in a complaint as true and take
them in the light most favorable to plaintiff, Erickson v. Pardus,
551 U.S. 89 (2007), but “[l]egal conclusions without adequate
factual support are entitled to no assumption of truth,”
v.
Berzain,
omitted).
654
F.3d
1148,
1153
(11th
Cir.
Mamani
2011)(citations
“Threadbare recitals of the elements of a cause of
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action, supported by mere conclusory statements, do not suffice.”
Iqbal, 556 U.S. at 678.
consistent
with
a
defendant’s
facially plausible.”
1337
(11th
Cir.
“Factual allegations that are merely
liability
fall
short
of
being
Chaparro v. Carnival Corp., 693 F.3d 1333,
2012)
(citations
omitted).
Thus,
the
Court
engages in a two-step approach: “When there are well-pleaded
factual allegations, a court should assume their veracity and then
determine whether they plausibly give rise to an entitlement to
relief.”
Iqbal, 556 U.S. at 679.
II.
The Complaint (Doc. #1) alleges federal question jurisdiction
based on copyright infringement “under the copyright laws of the
United States, 17 U.S.C. § 101 et seq” 1, and asserts personal
jurisdiction
over
defendants
based
on
their
“systematic
and
continuous business in Florida”, because they have 1,000 contacts
in Fort Myers, Florida, because defendants barricaded plaintiff in
his local home, and because defendants admit to publishing a
copyright-protected
photograph
of
1
plaintiff
in
the
State
of
“The district courts shall have original jurisdiction of
all civil actions arising under the Constitution, laws, or treaties
of the United States.” 28 U.S.C. § 1331. Also, “district courts
shall have original jurisdiction of any civil action arising under
any Act of Congress relating to patents, plant variety protection,
copyrights and trademarks.” 28 U.S.C. § 1338(a).
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Florida.
(Doc. #1, ¶ 10.)
Plaintiff alleges that a substantial
part of the acts of infringement complained of occurred in this
District.
Plaintiff
asserts
that
he
has
registered
and
copyrighted a photograph of himself 2, and that defendants infringed
his work by publishing the photograph.
Plaintiff further alleges
that he is the owner of the trademarks Extreme Seal Experience and
Phony Seal of the Week (the marks), and that defendants have used
these
marks
to
realize
revenue
causing
Plaintiff seeks to disgorge these profits.
plaintiff
damages.
Plaintiff identifies
a “First Cause of Action” as copyright and trademark infringement,
and a “Second Cause of Action” as trade disparagement without
providing any supporting facts or allegations in support of the
claims. 3
Plaintiff goes on to state the relief sought, including
injunctive relief, and cites to the Federal Copyright Act, but
does not cite to the Federal Trademark Act or the Lanham Act.
III.
“To make out a prima facie case of copyright infringement, a
plaintiff must show that (1) it owns a valid copyright in the work
and (2) defendants copied protected elements from the work.”
2
The Court notes that there are several pictures attached to
the Complaint, and it is unclear which picture is registered, and
which ones were created or published by defendants.
3
In fact, the Complaint only alleges the titles of the causes
of action.
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Smith v. Casey, 741 F.3d 1236, 1241 (11th Cir. 2014).
U.S.C. § 504 (remedies).
A prerequisite to a claim of infringement
requires that the work be preregistered or registered.
§ 411(a).
See 17
17 U.S.C.
Plaintiff asserts that he has registered and owns the
photograph at issue, and that defendants published it without
permission.
To present a claim for trademark infringement, plaintiff must
show “(1) that it had trademark rights in the mark or name at issue
and (2) that the other party had adopted a mark or name that was
the same, or confusingly similar to its mark, such that consumers
were likely to confuse the two.”
Suntree Techs., Inc. v. Ecosense
Int’l, Inc., 693 F.3d 1338, 1346 (11th Cir. 2012).
§§ 1114, 1117.
See 15 U.S.C.
Much like with the copyright claim, there must be a
registered mark.
15 U.S.C. § 1115.
Plaintiff has made no
allegations of a similar or confusingly similar mark, rather the
allegation is that defendants used or misappropriated plaintiff’s
marks for their own use and profit.
To assert a claim of false designation under the Lanham Act 4,
plaintiff must show: “(1) that the plaintiff had enforceable
4
It remains unclear whether “trade disparagement” is actually
a false designation claim. Under the Anticybersquatting Consumer
Protection Act, disparaging a mark is simply a factor used to
determine bad faith intent to profit from use of a confusingly
similar domain name.
15 U.S.C. § 1125(d).
See also Bavaro
Palace, S.A. v. Vacation Tours, Inc., 203 F. App'x 252, 256 (11th
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trademark rights in the mark or name, and (2) that the defendant
made unauthorized use of it “such that consumers were likely to
confuse the two.”
Custom Mfg. & Eng'g, Inc. v. Midway Servs.,
Inc., 508 F.3d 641, 647 (11th Cir. 2007).
As
part
of
the
elements,
plaintiff
See 15 U.S.C. § 1125(a).
must
show
“economic
or
reputational injury flowing directly from the deception. . . .”
Lexmark Int'l, Inc. v. Static Control Components, Inc., 134 S. Ct.
1377, 1391 (2014).
Although plaintiff has alluded to certain federal statutes,
plaintiff has not clearly stated a plausible claim under either of
the Causes of Action in compliance with Federal Rules of Civil
Procedure 8 and 10.
The Complaint will be dismissed without
prejudice to amending the pleading.
As a result, the Court will
defer the issues of personal jurisdiction and venue.
Accordingly, it is hereby
ORDERED:
1. Defendants' Motion to Dismiss Complaint for Failure to
State a Cause of Action and Lack of Personal Jurisdiction,
or Alternatively, Motion to Transfer Venue (Doc. #33) is
GRANTED IN PART AND DENIED AS MOOT IN PART.
The motion to
Cir. 2006). There are no allegations of a registered domain name
in this case.
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dismiss is granted and the Complaint is dismissed without
prejudice to filing an Amended Complaint within FOURTEEN
(14) DAYS of this Opinion and Order.
The motion is
otherwise denied as premature with regard to the issue of
personal jurisdiction or to transfer venue 5 pending the
filing of an Amended Complaint.
2. Plaintiff’s Motion to Conduct Discovery Re Jurisdiction of
Defendants,
Motion
to
continue
hearing/decision
until
after Discovery on Jurisdiction (Doc. #39) is DENIED as
moot and without prejudice.
DONE and ORDERED at Fort Myers, Florida, this
6th
day of
December, 2016.
Copies:
Parties of Record
5
The Court notes that the Complaint in this case is
strikingly similar to the First Amended Complaint filed by
plaintiff against these same defendants, and Extreme Seal
Experience LLC, in the Eastern District of Virginia, Norfolk
Division. See Bernath v. Extreme Seal Experience LLC, 2:16-cv00185-RGD-RJK (E.D. Va. July 25, 2016).
Defendants have also
argued that the same litigation is pending in Maryland.
(Doc.
#33, p. 2.)
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