Serrano v. Lopez et al

Filing 23

OPINION: re: 9 MOTION to Dismiss filed by Jessica Lopez, 15 MOTION to Dismiss Counterclaim filed by Rafael Serrano. Based upon the facts and conclusions of law set forth above, the Defendant's motions to dismiss the complaint , for the appointment of counsel, and for injunctive relief are denied.Plaintiff's motion to dismiss the slander counterclaim is granted. Defendant is granted leave to replead within 20 days. (Signed by Judge Robert W. Sweet on 6/18/2014) (ama)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

---------------------------------------x
RAFAEL SERRANO,
Plaintiff,

14 Civ. 560
OPINION

-againstJESSICA LOPEZ,
Defendant.

---------------------------------------x
A P P E A RA N C E S:

Attorneys for Plaintiff
KIRKLAND & ELLIS LLP
601 Lexington Avenue
New York, NY 10022
By:
Bonnie Jarret, Esq.
David Draper, Esq.

Pro Se
JESSICA LOPEZ
65 West 9 6th Street
Apartment 25A
New York, NY 10025

USDCSDNY
DOCUMENT
ELECTRONICALLY FILED
DOC#:
r '•, ' .I I {
DAT-t FILED:{ lJ t 11 p

Sweet, D.J.

The defendant, pro se, Jessica Lopez ("Lopez" or the
"Defendant") has moved (1) to dismiss the complaint of plaintiff
Rafael Serrano ("Serrano" or the "Plaintiff") ,
appointment of counsel, and (3)

( 2)

for the

for injunctive relief.

Serrano

has moved to dismiss the counterclaim of Lopez alleging slander.

Based on the conclusions set forth below, the motions
of Lopez to dismiss the complaint, for counsel, and for
injunctive relief are each denied, and the motion of Serrano to
dismiss the slander counterclaim is granted with leave granted
to Lopez to replead.

PRIOR PROCEEDINGS

On January 29, 2014, Serrano filed his complaint
alleging Defendant's infringement of his intellectual property
rights, fraudulent procurement of a federal trademark
registration, and misappropriation of his identity and persona.
On February 20, 2014, Lopez filed a counterclaim seeking to
assert a state law claim for slander and a motion to dismiss
Serrano's complaint.

Lopez's pleadings also indicated that she

sought injunctive relief.

On March 17, 2014, Serrano moved to
1

dismiss Lopez's slander counterclaim.

All motions were marked

fully submitted on April 16, 2014.

FACTS

1. Plaintiff's Conception and Use of the AMORETTO Mark

Plaintiff's complaint alleges that in or about
February of 1985, Serrano conceived of a music performance
concept which consisted of group performance combining
instrumental and vocal aspects resulting in a musical blend
which incorporated versified, traditional elements of Latin
music, such as Latin beats and the distinctive clave rhythm,
( Compl. 'JI 14. )

with computerized music sounds.

Visually and in

live performance, the music performance concept included an
element of dance and physical movement, primarily by two or
three female performers who would also provide backup vocals,
and further included attire derived from Latin American and
Spanish origins of fashion,

including black and/or white color-

schemed garments and Bolero-styled hats.

( Compl. 'JI 15. )

The

term "AMORETTO" was used by Serrano to identify and promote the
distribution and performance of recorded and live music
associated with this music performance concept.

2

(Compl.

<J[

13.)

Serrano first made commercial use of the AMORETTO mark
when he produced the recorded music album Clave Rocks on a
microgroove vinyl record ("LP record") medium and included three
versions of the "Clave Rocks" song-the Club Vocal, Radio Edit,
and Dub Rocks versions.

(Compl.

~

16.)

The production and

recording of the AMORETTO Clave Rocks album was proposed,
organized, controlled, and overseen by Serrano.

( Compl.

~

1 7. )

Serrano exercised creative control and direction over the
production of the album and made key personnel decisions
surrounding the recording and production of the album, including
through composing the various instrumental and vocal roles, and
then selecting the specific individuals who would fulfill each
role.

(Compl.

~

18.)

The AMORETTO Clave Rocks album was recorded and
produced on an LP record between February of 1985 and February
of 1986 and was sold and distributed beginning in March or April
of 1986 with the help of record company PKO Records
(Compl.

~

19.)

("PKO").

The AMORETTO mark was printed on the labels of

the LP record and the record was distributed to a variety of
retail outlets for sale to the public and was played on New
York-based radio stations broadcasting in the tri-state
metropolitan area.

(Compl.

~~

19-21.)

When the "Clave Rocks"

song was performed on the radio, disc jockeys simultaneously

3

(~_:_,

identified the song with its title
associated AMORETTO mark.

~

(Compl.

"Clave Rocks") and the

22.)

In July of 1986, Serrano and PKO created a design for
an outer cardboard record jacket to be used for future sales of
the Clave Rocks LP record previously released in March or April
of 1986.1

( Compl.

~

2 3.)

The face of the jacket for the

AMORETTO Clave Rocks album prominently featured the album title,
Clave Rocks, alongside the AMORETTO mark.

(Compl.

~

24.)

Serrano and PKO enlisted three women, including Defendant, to
pose with Serrano to create the photograph for the AMORETTO
Clave Rocks album cover.

( Compl.

~

2 6. )

The design for the

face of the jacket for the AMORETTO Clave Rocks album was
subject to Serrano's final approval; Serrano alleges Lopez was
not involved in the creation, recording, production, or release
of the Clave Rocks album.

(Compl.

~~

25, 27.)

In September or October of 1986, Serrano began public
performance of the "Clave Rocks" song using the AMORETTO mark in
various locations in New York City and New Jersey.

1

(Compl.

~~

Plaintiff notes in his complaint that at the time the album was released, it
was common practice among small record companies in the recording industry to
undertake designing a record jacket only when an album's initial release had
proven to be popular and that this practice accounts for the design of a
record jacket for the Clave Rocks album only after it had proven successful.
(Compl. ~ 23.)

4

28-29.)

Serrano made the booking arrangements and exercised

control over the logistics of these early live performance
appearances.

(Compl. 'JI 30.)

During the performances, Serrano

danced and played synthesizer and keyboard instruments, while a
pre-recorded overlay of the vocal and instrumental tracks from
the AMORETTO Clave Rocks album played.

(Compl.

<JI

Three

28.)

women danced and provided backup vocal accompaniment, attired in
Latin American and Spanish fashion-inspired garments - usually
in black and/or white color-schemed attire - and topped with
Bolero-styled hats.

Id.

Lopez was one of the three female dancers and backup
vocalists who initially performed with Serrano under the
AMORETTO mark.

(Compl.

<JI

31.)

After several months, however,

Serrano became unsatisfied with Lopez' performance quality and
level of dedication to his performance concept and Serrano
replaced Lopez with another female dancer and singer.

Id.

During 1986 and 1987 Serrano continued to promote the
concept and expanded his recorded and live music performance
activities under the AMORETTO mark to a variety of venues,
including Miami, Puerto Rico, South America, the Dominican
Republic, and Germany.

(Compl. 'JI'JI 32-33.)

The live

performances continued to feature Serrano dancing and playing
5

synthesizer and keyboard instruments, while a pre-recorded
overlay of the vocal and instrumental tracks from the AMORETTO
Clave Rocks album played.

(Compl.

~

34.)

Three women danced

and provided backup vocal accompaniment, attired in Latin
American and Spanish fashion-inspired garments - usually in
black and/or white color-schemed attire - and topped with
Bolero-style hats.

Id.

Between 1987 and about 1995, Serrano recruited
approximately twelve different dancers and backup singers to act
in live performances of Serrano's distinctive music concept
under the AMORETTO mark.

(Compl.

~

35)

Serrano actively

promoted the AMORETTO mark, appearing on Puerto Rican television
and performing with other well-known artists.
37.)

( Compl.

~~

3 6-

At all times Serrano exercised creative control, quality

oversight, personnel selection, and decision-making over the
performance activities under the AMORETTO mark.

(Compl.

~

35.)

To this day, Serrano has continued to use the AMORETTO
mark to promote his work.

(Compl.

~

41).

Serrano receives

royalty payments for the authorized playback, sale, and
performance of the AMORETTO "Clave Rocks" song and he continues
to promote his concept under the AMORETTO mark to consumers
through popular distribution and communication channels such as
6

(Compl.

YouTube, Discogs, and Facebook.

~~

42, 44.)

Serrano's

efforts and commercial activities using the AMORETTO mark have
resulted in consumers' recognition and association of the
AMORETTO name with Serrano and his distinctive music concept.
( Compl.

~

3 9. )

2. Defendant's Use of the .AMORETTO Mark

Lopez has used the AMORETTO name in commerce in
connection with recorded music and live music performance.
(Compl.

~

45.)

Her recorded music works under the name AMORETTO

have been and continue to be available for purchase by the
consuming public.

(Compl.

~

46.)

Lopez has also performed

under the name AMORETTO at venues in New York City and in the
New York City metropolitan area.

(Compl.

~

48.)

Both Lopez'

recorded music and performances under the AMORETTO mark have
incorporated structural and stylistic music features similar to
those employed by Serrano.

(Compl.

~

49.)

Additionally, Lopez has performed songs with similar
titles and content to those performed and recorded by Serrano,
such as songs titled "Rock the Clave" and "Clave Rock," under
the AMORETTO name.

(Compl.

~

52.)

Lopez has also featured

elements of dance and physical movement implemented through the
7

inclusion of two or three female performers who provide backup
vocal support along with dance contributions and who appear, in
the style of their dance, physical movement, and performance
attire in a manner similar to the visual performance aspects of
the AMORETTO-brand music concept.

(Compl. '1!'1! 55-56.)

In at

least one public performance in New York City under the name
AMORETTO, Lopez has featured a male performance role in which
the male performer resembles Serrano.

(Compl. '1I 59.)

Music

fans, after viewing Lopez' performances under the AMORETTO name,
have contacted Serrano to question whether there is any
relationship between Serrano and Lopez' music activities.
(Compl. '1I 62.)

Serrano has more than once apprised Lopez of his
rights in the AMORETTO mark and Serrano's counsel has requested
that Lopez cease and desist her use of the AMORETTO mark.
(Compl. '1I 63.)

3. Defendant's Procurement of USPTO Registration for the
AMORETTO Mark

On November 3, 2010, Lopez filed a Trademark/Service
Mark Application, Serial Number 85/168,554

(the "'554

application"), with the United States Patent and Trademark

8

Office (the "USPTO")

seeking federal registration for the mark

AMORETTO for "[s]ound recordings featuring music" and
"[e]ntertainment, namely, live music concerts;
namely live performances by a musical band."

[e]ntertainment,
(Compl.

~~

64-65.)

In the application, Lopez declared that she "believes the
applicant to be the owner of the trademark/service mark sought
to be registered," and further declared that "to the best of
[her]

knowledge and belief no other person, firm, corporation,

or association has the right to use the mark in commerce."
(Compl.

~

67.)

Lopez also submitted to the USPTO a photograph

of the AMORETTO Clave Rocks album and represented that it was a
"photographed album cover with picture of AMORETTO performing
live musical concert with her band on cover."

( Compl.

~

7 3.)

At the time Lopez submitted her application, Serrano
had already expressly apprised Lopez of his rights in the
AMORETTO mark.

(Compl.

~

69.)

On March 15, 2011, the USPTO examiner rejected the
'554 application in its entirety.

With respect to Lopez'

request to register the mark for "[s]ound recordings featuring
music," the USPTO examiner stated that the specimen of record
(i.e., the photograph of the face of the jacket of the AMORETTO
Clave Rocks album) was insufficient alone to demonstrate use of
9

the AMORETTO name as a mark.

(Compl. 'JI 80.)

The USPTO examiner

required that Lopez supplement the '554 application with (a) one
or more additional specimen(s) demonstrating that the AMORETTO
name was used by the applicant on a series of sound recordings
and (b) evidence that the AMORETTO name was promoted and
recognized by others as the source of the series of sound
recordings, or evidence that the performer controlled the
quality of the recordings and controlled the use of the name.
Id.

The USPTO examiner further explained that if the sound

recordings were recorded under the applicant's control, Lopez
could submit, as evidence of control, a sworn statement that
"[t]he applicant produces the goods and controls their quality."
Id.

On June 29, 2011, Lopez submitted an additional
specimen in the form of a photograph of Lopez holding two LP
record jackets, one of which was the AMORETTO Clave Rocks album,
and the other an album released by the artist DIVA titled I
Wanna Break Night With You.

(Compl. 'JI 81.)

Lopez' specimen

displayed the jacket of DIVA's I Wanna Break Night With You with
the word "Amaretto," while the commercially-released album
jacket does not contain the word "Amaretto."

(Compl. 'JI 82.)

Along with the specimen, Lopez also submitted an explanatory
statement to the USPTO representing that this specimen was a
10

"digitally photographed picture of AMORETTO holding two compact
disc covers displaying discography of AMORETTO as supporting
evidence that the applied-for-mark is used as a series of
(Compl.

multiple works and not a single work."

~

84.)

Lopez

noted that "[i]n response to the substantive refusal(s)
[t]he applicant produces the goods and controls their quality."
(Compl.

~

90.)

Lopez is not named on the DIVA I Wanna Break Night
( Compl.

With You album credits.

~

8 8. )

On November 1, 2011, the USPTO granted the '554
application and Lopez was issued U.S. trademark registration No.
4,048,043 (the "'043 registration").

(Compl.

~

95.)

Subsequently, Lopez has demanded, citing the '043 registration,
that Serrano cease and desist from the use of the trade name and
service mark AMORETTO.

(Compl.

~

97.)

Lopez has also submitted

infringement complaints to YouTube, requesting that YouTube
remove videos depicting performances by Serrano under the
AMORETTO mark.

~

98.)

on at least one occasion.

Id.

(Compl.

YouTube has honored this request

Serrano has faced reluctance from prospective business
partners to collaborate and invest in business ventures to
11

further develop and capitalize on the AMORETTO-brand music
concept.

( Compl.

<JI

9 9. )

Lopez' registration for the AMORETTO

mark has been given as the reason for this reluctance.

Id.

4. Allegations of Defamation

Lopez claims that Serrano has defamed her "on the
internet[,] by phone to [her] colleagues and by email and at
venues" over the past 29 years and more frequently since July 6,
2013.

(Countercl. 9.)

She further states that Serrano "tells

everyone that [she] is riding his 'coat tail.'"

Id.

Lopez

alleges that she has sustained mental, emotional and financial
injuries, such as money she would get from performing shows, and
that she has been in "Doctor's care for fear and depression" as
a result of Serrano's actions.

(Countercl. 9-10.)

DISCUSSION

1. Defendant's Motion to Dismiss Does Not Set Forth a
Cognizable Basis for Dismissal

On a motion to dismiss pursuant to Rule 12(b) (6), all
factual allegations in the complaint are accepted as true, and
all inferences are drawn in favor of the pleader.
Polar Molecular Corp., 12 F.3d 1170, 1174
12

Mills v.

(2d Cir. 1993).

A

complaint must contain "sufficient factual matter, accepted as
true, to 'state a claim to relief that is plausible on its
face.'"

Ashcroft v. Iqbal, 556 U.S.

662, 663 (2009)

(quoting

Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007)).

"A claim

has facial plausibility when the plaintiff pleads factual
content that allows the court to draw the reasonable inference
that the defendant is liable for the misconduct alleged."
Desilva v. North Shore-Long Island Jewish Health Sys., Inc., 770
F.Supp.2d 497, 506 (E.D.N.Y. 2011)

(citing to Twombly, 550 U.S.

at 555 ("[A] plaintiff's obligation to provide the grounds of
his entitlement to relief requires more than labels and
conclusions, and a formulaic recitation of the elements of a
cause of action will not do.")).

In other words, the factual

allegations must "possess enough heft to show that the pleader
is entitled to relief."

Twombly, 550 U.S. at 557

(internal

quotation marks omitted).

Plaintiff provides a lengthy and detailed description
of events relating to Lopez in his complaint.
100.)

(Compl. '1!'1! 13-

Lopez has denied the allegations of the complaint but has

failed to set forth a cognizable basis to dismiss the complaint. 2
As such, her motion to dismiss must be denied.

2

Liberally construed, Lopez's papers could be read to allege that the
complaint is, in some sense, time-barred.
(Def. Aff. 1) ("Serrano had one

13

2. Defendant May Seek Counsel Through the Pro Se Office

Lopez may seek appointment of counsel through the Pro
Se Office of the court.

Her motion for court appointment is

denied at this time with leave granted to renew at the time of
any dispositive action.

3. Defendant Has Failed to Make a Factual Showing Justifying
Injunctive Relief

In order to establish a claim for preliminary
injunctive relief, a movant must show: "(l) irreparable harm and
(2) either (a) a likelihood of success on the merits, or (b)
sufficiently serious questions going to the merits of its claims
to make them fair ground for litigation, plus a balance of the
hardships tipping decidedly in favor of the moving party."
Citigroup Global Markets,

Inc. v. VCG Special Opportunities

Master Fund Ltd., 598 F.3d 30, 35 (2d Cir. 2010); see also
Oneida Nation of N.Y. v. Cuomo, 645 F.3d 154, 164
2011) .

(2d Cir.

The moving party must not only show that there are

"serious questions" going to the merits, but must also establish

year to contest me - now 3-5 YRS later - he's contesting me?")
Lopez has
only made one remark to this effect, however, and has failed to clarify any
sufficiently clear statute of limitations grounds that can be treated as a
cognizable grounds for dismissal.

14

that "the balance of hardships tips decidedly" in its favor.
Citigroup Global Markets, Inc., 598 F.3d at 35 (quoting Jackson
Dairy, Inc. v. H.P. Hood

&

Sons, Inc., 596 F.2d 70, 72

(2d Cir.

197 9)) .

In order for injury to be considered irreparable it
must be "actual and imminent" and one that "cannot be remedied
if a court waits until the end of trial to resolve the harm."
Toney-Dick v. Doar, No. 12-9162, 2013 WL 1314954, at *9
(S.D.N.Y. Mar. 18, 2013)

(quoting Faiveley Transp. Malmo AB v.

Wabtec Corp., 559 F.3d 110, 118 (2d Cir. 2009)).

Money damages

are thought to be the "antithesis of irreparable harm."

Toney-

Dick, 2013 WL 1314954, at *9; see also Synergy Advanced Pharm.,
Inc. v. CapeBio, LLC, No. 10-1736, 2010 WL 2194809, at *4
(S.D.N.Y. June 1, 2010).

To make a showing of a "likelihood of

success" a plaintiff must convince the Court that it is more
likely than not - or "the probability of prevailing is 'better
than fifty percent'" - that it will succeed on its claims.
Greenlight Capital, L.P. v. Apple, Inc., No. 13-976, 2013 WL
646547, at *4

(S.D.N.Y. Feb. 22, 2013)

(quoting BigStar Entm't,

Inc. v. Next Big Star, Inc., 105 F.Supp.2d 185, 191 (S.D.N.Y.
2000)) .

15

To the extent that Lopez seeks injunctive relief, she
has made no showing, factual or otherwise, in support of her
request for this remedy and, as such, it must be denied.
e.g., A.X.M.S. Corp. v. Friedman,
2013)

3

See,

948 F.Supp.2d 319 (S.D.N.Y.

(request denied where movant made insufficient showing

under the applicable factors).

4. Defendant's Counterclaim Contains Insufficient Factual
Matter to Survive a Motion to Dismiss

Defamation is the injury to one's reputation either by
written expression, which is libel, or by oral expression, which
is slander.

Krepps v. Reiner, 588 F.Supp.2d 471, 483 (S.D.N.Y.

2008) aff'd, 377 F. App'x 65

(2d Cir. 2010)

(citing Idema v.

Wager, 120 F.Supp.2d 361, 365 (S.D.N.Y. 2000)).

To state a

claim for defamation, a plaintiff "must allege (1) a false
statement about the plaintiff,

( 2) published to a third party

without authorization or privilege,

(3) through fault amounting

to at least negligence on [the] part of the publisher,

(4) that

either constitutes defamation per se or caused 'special

3

Indeed, Lopez seems to allege that she is suffering monetary damages, which
are an improper basis for granting a preliminary injunction.
(Countercl. 10)
("I am seeking that he stop harassing me - honor the court order set by a
Judge in his own home town in New Jersey to stop contacting people I work
with including record label and friends to get those people to stop working
with me.
Each day he does this I loose [sic] show money."); Toney-Dick, 2013
WL 1314954, at *9 (if the "harm can be remedied in money damages[, that] is
the antithesis of irreparable harm, and such a fact requires that the Court
not find an irreparable injury").

16

damages.'"

Thai v. Cayre Group, Ltd., 726 F.Supp.2d 323, 329

(S.D.N.Y. 2010).

A defamation or slander claim "is only sufficient if
it adequately identifies the purported communication, and an
indication of who made the communication, when it was made, and
to whom it was communicated."

Thai, F.Supp.2d at 329 (quoting

Scholastic, Inc. v. Stouffer, 124 F.Supp.2d 836, 849 (S.D.N.Y.
2000)).

A complaint that sufficiently alleges the occurrence of

a false statement of fact must nevertheless be dismissed if it
fails to also allege "who," "when," and "to whom" the alleged
defamatory statements were made.
Corp. of Am., 767 F.Supp. 469,
Krepps,

588 F.Supp.2d at 484

Reeves v. Cont'l Equities

473

(S.D.N.Y. 1991); see also

(noting that failure to identify

allegedly defamatory and slanderous statements were too
generalized and, as such, insufficient to state a claim); see
also, Nowak v. EGW Home Care, Inc., 82 F.Supp.2d 101, 113
(W.D.N.Y. 2000).

This court construes Lopez's counterclaim allegations
liberally.

Erickson v. Pardus, 551 U.S. 89,

94

(2007)

("[A] pro

se complaint, however inartfully pleaded, must be held to less
stringent standards than formal pleadings drafted by lawyers.")
(quoting Estelle v. Gamble,

429 U.S.
17

97, 106 (1976)).

Nevertheless, although Lopez alludes to ongoing, repeated
instances of alleged defamation, her counterclaim lacks the
requisite specificity to survive a motion to dismiss.
Iqbal, 556 U.S. at 678

See

(though the court must accept the factual

allegations of a complaint as true, it is "not bound to accept
as true a legal conclusion couched as a factual allegation")
(quoting Twombly, 550 U.S. at 555).

At most, Lopez alleges a

vague statement made by the Plaintiff that Lopez was "riding his
'coat tail.'"

(Countercl. 9.)

This type of statement, however,

is most appropriately categorized - to the extent it can be
analyzed without proper factual context and specificity - as a
statement of opinion, which is not actionable as defamation.
See Biro v. Conde Nast, 883 F.Supp.2d 441, 459-60 (S.D.N.Y.
2012); Egiazaryan v. Zalmayev, 880 F.Supp.2d 494, 503 (S.D.N.Y.
2012).

Lopez's counterclaim for defamation, therefore, is

dismissed with leave granted to replead within 20 days.

18

CONCLUSION

Based upon the facts and conclusions of law set forth
above, the Defendant's motions to dismiss the complaint, for the
appointment of counsel, and for injunctive relief are denied.
Plaintiff's motion to dismiss the slander counterclaim is
granted.

Defendant is granted leave to replead within 20 days.

Dated:

New York, New York
June/~, 2014

c-·\

19