see the Play and determine whether Caldwell should produce it; 2) defendants' negotiations with Dramatists Play Service to obtain the license to produce the play and defendants' sending royalty payments in connection with that license into New York; 3) defendants' auditions in New York to cast actors; 4) defendants' filing the actors' contracts in New York with Actors Equity Association; 5) defendants' meeting in New York with backstage personnel from the New York production to obtain technical information; and finally, 6) defendants' payments to the actors union's benefit funds in New York. (Pl. Mem. at 18-20) In reply, Hall claims that all negotiations to obtain the rights to the Play were conducted from Florida and not in New York, and that no one from Caldwell met with backstage personnel or inspected the set of the New York production of the play. (6/6/96 Hall Aff. P 8; 6/17/96 Hall Aff. P 7)
Of the above contacts, only defendants' license with Dramatist Play Service and its employment contracts and connections with New York actors and their unions arguably constitute transaction of business in New York. Transaction of business does not include viewing a Broadway production which is open to the public, or meeting with technical people to obtain information about the Play. Those actions may very well have been blameworthy in the sense that defendants were attending the Play not merely to enjoy it but to copy its presentation so they could produce their allegedly infringing play. However, simply because conduct may be blameworthy does not make it transaction of business.
Even if defendants transacted business with the actors, their unions and Dramatist Play Service, they are not subject to personal jurisdiction in New York courts pursuant to § 302(a)(1) unless plaintiff's claims for relief arise out of that business. See, e.g., Agency Rent a Car, 1996 U.S. App. LEXIS 27252, F.3d at , 1996 WL 596794 at *4. "A claim 'arises out of' defendant's transaction of business in New York 'when there exists a substantial nexus between the business transacted and the cause of action sued upon." Id. (citations omitted).
Here, plaintiff has claimed that defendants misrepresented the source of the staging and direction of the Play in violation of the Lanham Act and plaintiff's common law rights, that defendant infringed plaintiff's copyright
, and that defendant was unjustly enriched. Plaintiff's claims all sound in tort and do not arise out of defendants' transaction of business in New York. For a tort claim to arise out of transaction of business in New York, the connection between the transaction and the claim must be direct. Here, plaintiff claims that defendants intentionally copied his unique staging of the Play. The business which defendants transacted in New York included holding auditions in New York and hiring New York actors whose contracts were filed with unions in New York, sending benefits payments to the actors unions in New York, entering into a licensing agreement with Dramatists Play Service, and sending royalty payments to the Play Service. None of these activities resulted directly in an injury to plaintiff. The torts alleged here, all stemming from the wrongful misappropriation of plaintiff's stage directions, do not arise out of defendants' hiring of New York actors and dealing with New York unions, or defendants' agreement with Dramatist Play Service. Each of these alleged transactions was with a third party and not with plaintiff. Plaintiff has not made a prima facie showing that his claims arise out of defendants' transaction of business in New York. Therefore, CPLR § 302(a)(1) does not confer jurisdiction here.
Plaintiff argues next that New York courts may exercise personal jurisdiction over defendants pursuant to CPLR § 302(a)(2) which grants jurisdiction over a nondomiciliary who "commits a tortious act within the state . . . ." N.Y.C.P.L.R. 301(a)(2).
To satisfy § 302(a)(2), in cases involving copyright infringement and violations of the Lanham Act, the offering, display or sale of the allegedly infringing product must occur in New York. That is to say, the conduct that occurs in New York must be the infringer's misrepresentation of the source of the product or his unauthorized presentation of the product. See, e.g., Imagineering, Inc. v. Van Klassens, Inc., 797 F. Supp. 329 (S.D.N.Y. 1992) (unfair competition in violation of the Lanham Act); Dave Guardala Mouthpieces, Inc. v. Sugal Mouthpieces, Inc., 779 F. Supp. 335 (S.D.N.Y. 1991) (trademark/trade dress infringement); Business Trends Analysts v. Freedonia Group, Inc., 650 F. Supp. 1452 (S.D.N.Y. 1987) (copyright infringement). In addition, plaintiff's state law claim of "reverse passing off" is a tort encompassed within a claim of "unfair competition." See Grupke v. Linda Lori Sportswear, Inc., 921 F. Supp. 987, 996 (S.D.N.Y. 1996) "Under New York law the 'essence' of an unfair competition claim is 'the bad faith misappropriation of the labors and expenditures of another, likely to cause confusion or to deceive purchasers as to the origin of the goods.'" Id. (citing Milstein v. Greger, Lawlor, Roth, Inc., 58 F.3d 27, 34 (2d Cir. 1995)) (emphasis added); see also American Movie Classics Co. v. Turner Entertainment Co., 922 F. Supp. 926, 932 (S.D.N.Y. 1996) ("The essence of [passing off] is false representation of origin."). Accordingly, to commit the tort of reverse passing off within New York, a defendant must pass off goods in New York -- offer some products, goods or services within New York which he misrepresents as his own. See Business Trends, 650 F. Supp. at 1456 (finding jurisdiction over an unfair competition claim based on evidence that the defendant attempted to sell his product in New York); Imagineering, 797 F. Supp. at 331 ("For each of plaintiff's claims [including common law unfair competition] the cause of action is deemed to arise where the allegedly infringing sales were made."). An actual sale of an infringing product "is not necessary to establish personal jurisdiction" Business Trends, 650 F. Supp. at 1456; merely offering one copy of an infringing product through distribution of a catalog within the state is sufficient. Honda Assocs., Inc. v. Nozawa Trading, Inc., 374 F. Supp. 886, 889 (S.D.N.Y. 1974).
Here, plaintiff claims that defendants passed off their infringing play in New York by soliciting ticket sales, subscriptions and contributions from New York residents. Plaintiff claims first that defendants obtained contributions from Chemical Bank and the IBM corporation, two New York-based organizations, and to solicit these contributions, "undoubtedly. . . sent promotional material and other information to New York in which Defendants passed off Plaintiff's work as their own." (Pl. Mem. at 22) (emphasis added) Plaintiff bases that claim on the program for the Caldwell production of the Play, which lists Chemical Bank and IBM as major contributors. (7/9/96 Shechtman Aff. P 7). Defendants state that they obtained contributions in the form of used computer equipment and donations from IBM and Chemical Bank, but that those contributions were solicited from IBM's and Chemical Bank's local offices in Boca Raton, Florida. (7/17/96 Hall Aff. P 4) Defendants' explanation thoroughly refutes plaintiff's allegation; other than that bare allegation, plaintiff has offered no evidence that defendants solicited foundations or companies in New York or that defendants sent promotional material into New York. Plaintiff merely surmises both that defendants solicited Chemical Bank and IBM in New York, and that in doing so defendants sent to New York promotional material in which they passed off the Play.
Plaintiff argues next that "based on the dual residence of many members of Defendants' audience [Florida and New York], Defendants have likely solicited ticket sales or subscriptions for the infringing play in New York." (Pl. Mem. at 22) (emphasis added) Plaintiff's argument, that defendants "must have" solicited ticket sales or subscriptions to the Play, is not factually based or intuitively apparent. Rather, plaintiff is merely making an inference from the fact that many residents of Florida also are residents of New York that defendants must have solicited business in New York. In two sworn affidavits, Hall states that "the Caldwell production of the Play was promoted, marketed and advertised exclusively in the State of Florida" (6/6/96 Hall Aff. P 22), and "Caldwell does not and has not regularly solicited support or contributions in New York from New York residents." (7/17/96 Hall Aff. P 4)
Although on a motion to dismiss I must resolve all doubts and construe all documents in favor of plaintiff non-movant, Cutco Inds., 806 F.2d at 365, plaintiff has failed to present a prima facie case that the alleged torts took place in New York. Plaintiff merely surmises that defendants solicited or sold tickets in New York. Even if I took judicial notice of the fact that many residents of Florida are also residents of New York, the conclusion that defendant solicited ticket sales in New York does not follow. Indeed, absent specific evidence -- and there is none here -- it is implausible that a Florida business whose product -- plays -- can be consumed only at its theater in Florida and is unlikely itself to provide the reason or focus for a trip to Florida, would solicit business in New York. In plain terms, these defendants run a regional theater, not Disneyworld.
Finally, Plaintiff's allegation that defendants came to New York to spy on his production of the Play, i.e., to view the Play and take notes on the direction and staging may, as noted, constitute blameworthy behavior. However, those acts do not constitute the torts which plaintiff alleges defendants committed. Each tort plaintiff alleges -- copyright infringement, unfair competition under the Lanham Act, and common law reverse passing off -- requires the sale or the offering for sale of the allegedly infringing product or service in New York. It is important to remember that "CPLR 302 does not extend jurisdiction as far as may be constitutionally permitted." Interface Biomedical Labs. Corp. v. Axiom Medical Inc., 600 F. Supp. 731, 734 n.3 (S.D.N.Y. 1985). The issue here is whether the statute permits the exercise of personal jurisdiction, not whether the Constitution does. Plaintiff has failed to make a prima facie showing that defendants committed a tort in New York by offering or promoting the Play in New York and CPLR § 302(a)(2), therefore, does not confer jurisdiction.
* * *
For the reasons stated above, defendants' motion to dismiss based on lack of personal jurisdiction, Fed. R. Civ. P. 12(b)(2) is granted. Defendants' other motions need not be decided.
Dated: New York, New York
November 13, 1996
Michael B. Mukasey
U.S. District Judge